I Have Registered a Trade Mark. How Do I Enforce My Rights?
Emily Young
Suppose you have registered a trade mark. In that case, you have enforcement rights to stop others from using any sign that is deceptively similar or substantially identical to what you have registered. This is as long as the infringer is using it concerning similar goods or services. Therefore, you should monitor attempts to use or register similar or identical trade marks to your own. This article will take you through measures to enforce your trade mark rights.
Monitor the Trade Mark Register
Once you have registered a trade mark, you should monitor the Australian Trade Mark Online Search System (ATMOSS) for new trade mark applications that are similar to yours for similar goods or services. This can be as simple as searching elements of your trade mark (such as words or images) in the same or associated classes. Try and expand your search to include trade marks that may be phonetically or visually similar to what you have registered.
If you find any similar trade mark applications on the register, you should then turn your attention to the status of that application. If the status is ‘Published: Under Examination’, it is likely that the application is experiencing examination issues with IP Australia. This may be due to a conflict with your existing registration. If, however, the status is ‘Accepted’, you should consider obtaining legal advice immediately. To prevent it from achieving registration, you may need to oppose the other accepted application in its opposition period.
If you have found another similar application, you should also consider conducting due diligence and finding out if the other applicant is using their trade mark in commercial trade. If that is the case, you may need to also explore pursuing a trade mark infringement claim.
Identify Trade Mark Infringement
Before taking action to enforce your trade mark rights, you must ensure that actual infringement has occurred. There can be negative consequences if you accuse someone of trade mark infringement and are incorrect. There are three key things you will need to prove to establish infringement of your trade mark registration, including that the:
- trade mark in question is substantially identical or deceptively similar to your registered trade mark;
- infringer is using the trade mark concerning identical or closely related goods or services; and
- infringement is likely to deceive or cause confusion.
To determine whether the two trade marks are similar, you should compare the overall impression of the trade marks. If it is likely that people would confuse the two trade marks, this will likely constitute an infringement.
When comparing if the goods or services are the same or closely related, you should consider several things. This includes the nature and use of the goods/services, how they are purchased and provided, and whether you would provide them through the same trade channel.
Have a Plan
Designing an enforcement plan is a great way to have a strategy ready to enforce your trade mark rights. Some things to consider adding to your trade mark enforcement plan include:
- outlining ways you will actively search for infringing trade marks;
- deciding what degree of infringement is worth enforcing; and
- determining a budget for your legal fees.
Having a strategy will help give you some structure when a trade mark infringement arises. This will allow you to evaluate which actions are worth the time and cost of taking.
We also recommend documenting evidence of the searches you have conducted and any instances of another party’s trade mark use that you believe would constitute infringement. This will be helpful at a later date if you decide to enforce your rights.
Take Action
Suppose somebody infringes on your trade mark and you have decided to take action. Then, it is crucial to decide how you will enforce your trade mark rights. You can see some of your trade mark enforcement options in the table below:
| Sending a ‘cease and desist’ letter | A cease and desist letter is a notice you can send to stop others from infringing on your trade mark rights. This is similar to a letter of demand in that you will be requesting the business infringing on your trade mark to stop doing so before you take legal action. It is important to note that if you send a cease and desist letter and you find out later that there has been no trade mark infringement, there may be legal consequences. |
| Filing a formal opposition | You can formally oppose a trade mark application if you believe it is too similar or identical to your own. Once a trade mark is advertised as accepted, you have two months from the date of the advertisement to file a ‘Notice of Intention to Oppose’. Within one month of filing this notice, you must file a ‘Statement of Grounds and Particulars’ with IP Australia explaining why they should not register the trade mark. If the other business intends to defend its application, you will also have to file evidence supporting your opposition. You must do this within three months of receiving their notice of intention to defend. Ultimately, IP Australia will decide whether they will register the trade mark. If you are unhappy with the decision made by IP Australia, you will have 21 days to appeal to the relevant court. |
| Going to court | If the other party ignores your cease and desist letter, or you feel the other party is not responding properly, you may consider commencing proceedings against the other party. This process can be costly and time-consuming, and you may like to consider the cost of court proceedings against the potential loss of brand value from the alleged infringement. |
Key Takeaways
Once you have registered a trade mark, you will have trade mark enforcement rights. These rights include being able to prevent others from using your trade mark by:
- sending a cease and desist letter;
- filing a formal opposition to a trade mark application; or
- going to court.
Enforcing your trade mark can be a very complex process. Our experienced trade mark lawyers can help you with enforcing your trade mark. For assistance, give them a call on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
Once you have registered your trade mark, you have exclusive rights to use and commercialise your trade mark. These rights include the right to enforcement, which means you can take action to prevent others from using your trade mark.
There are a number of ways you can enforce your trade mark rights. The approach you take for trade mark enforcement will depend upon several factors, including your business’ goals and financial restraint. Some options for enforcing your trade mark include sending a cease and desist letter, filing a formal opposition, or going to court.