Avoiding Trade Mark Infringement

George Raptis

• 2 August 2021
• 18 January 2022
• 6 min read

It might be surprising to know how common trade mark infringement is. Unfortunately, it is becoming increasingly common. This is due to the competitive market as businesses register more trade marks to protect their brand. To limit the possibility of finding yourself in an unwanted trade mark dispute, this article outlines what trade mark infringement is, and certain measures you should take to avoid trade mark infringement. 

What Is Trade Mark Infringement? 

Whilst there is no comprehensive checklist to follow which will guarantee that you will not commit trade mark infringement, you should be aware of what actions can constitute trade mark infringement. 

Since trade mark owners hold the exclusive rights to use, licence and sell their trade mark, any conduct which interferes with these exclusive rights is called trade mark infringement. Trade mark infringement is not just when a person uses a sign that is substantially identical or deceptively similar to a registered trade mark. They must also use the sign concerning goods or services which the already registered trade mark protects. For example, a search engine named ‘Gogle’ would likely infringe on the trade mark rights held concerning the popular search engine Google. 

However, there are some instances where using a trade mark without the trade mark owner’s permission will not constitute infringement. Under the Trade Marks Act, a person acting in good faith can use a registered trade mark if it:

• is their own name;
• describes their good or service; or
• indicates the intended purpose of their good or service. 

In these instances, whether a person has acted in good faith does not depend on what the person believed when they used the registered trade mark. Instead, the Courts view the person’s conduct from an objective standpoint. They question whether there was an honest belief that using the trade mark would not confuse consumers. They also decide if there was no intention to take advantage of the reputation of the business that owned the registered trade mark. 

Avoiding Trade Mark Infringement 

Below are a number of measures you can take at various stages of dealing with a trade mark. This will help to avoid the possibility of committing trade mark infringement. 

Conduct a Trade Mark Search 

Before you apply to register a trade mark with IP Australia, you should conduct a trade mark search via the Australian Trade Mark Search. A trade mark search is a great way to detect any similar or identical trade marks that have already been registered before you file your trade mark application. This will mean that you can limit your chances of committing trade mark infringement and increase your chances of having your application accepted by IP Australia. 

IP Australia may accept a trade mark despite it being similar to an existing trade mark. In this case, there is the possibility that other trade mark owners can oppose the application. Although the process of opposition is lengthy, it can eventually lead to having a similar mark removed. 

Update Your Records 

If you have already registered a trade mark, it is important that you then update your records both internally and externally. Updating your details internally can mean conducting regular IP audits to ensure that the trade marks within your possession are protected or recording any licences you have granted to third parties to use your trade marks. In addition, maintaining accurate records can assist you when proving that you have not committed trade mark infringement if somebody took action against you. 

You should also update your records externally with IP Australia. Updating your details externally can include ensuring that your contact details are up to date on the registry, as well as verifying when the date of renewal for your trade mark. This can allow others to contact you directly in the instance where there has been a potential infringement or to inquire about licensing your trade mark. 

Get Permission 

If you want to use a registered trade mark, you can directly contact the trade mark owner to obtain a licence to use the trade mark. Licensing is where the licensor (the trade mark owner) agrees to let the licensee (another person) use their trade mark over a specified period of time for an agreed price. Once the licensing period is over, the right to use the trade mark returns to the licensor. As long as you then use the trade mark following the licensing arrangement, you will not infringe on the owner’s intellectual property rights. 

Respond to Potential Infringements

If you receive a cease and desist letter concerning a potential trade mark infringement, you should stop infringing conduct. Additionally, you should respond. By responding accordingly, you will give yourself greater time to seek out legal advice to confirm whether you have or have not committed trade mark infringement. You will also prevent any further infringements from occurring. However, you should note that some people send letters of demand on unjustified claims of infringement. For this reason, it would be wise to seek legal advice. This can clarify whether you have acted in breach of another’s intellectual property rights. 

Key Takeaways

There are multiple ways to limit your possibility of committing trade mark infringement. Before applying for a registered trade mark, you should conduct a trade mark search. This will ensure that nobody has already registered your trade mark. If you already own a registered trade mark, it would be wise to update records of your usage and licensing. This can help where you may have to prove that you did not commit trade mark infringement. Finally, if you want to use a registered trade mark, you must receive permission from the trade mark owner. If you require further legal assistance with avoiding trade mark infringement, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.  

Frequently Asked Questions