What to Consider Before Taking Legal Action for Trade Mark Infringement
George Raptis
If you come across a business that has copied or used a similar mark to your registered trade mark, your gut instinct might be to pursue legal action for trade mark infringement. However, infringement does not necessarily arise in every instance where someone uses an identical or similar trade mark. In this article, we explain some considerations before taking legal action, including whether:
- you have a strong case for proving trade mark infringement; and
- any exceptions to trade mark infringement apply.
These considerations will allow you to be well-informed before deciding to take legal action for trade mark infringement.
1. Has Trade Mark Infringement Actually Occurred?
This may seem like a trivial question to ask yourself. However, it is still a necessary consideration since the potential infringement that you have identified may not neatly fit the legal definition of trademark infringement.
Trade mark infringement arises where someone:
- uses a sign that is deceptively similar or substantially identical to a registered trade mark; and
- this sign is used in relation to the same or similar goods and services that the trade mark is registered in connection to.
For example, imagine a tech firm sold their products with a half-eaten apple logo displayed on their packaging. In this case, the firm would likely be infringing on trade mark rights held by Apple Inc.
Whether a sign is substantially identical or deceptively similar to your registered trade mark ultimately depends on the features of the sign used. A court will make a side-by-side comparison, comparing the similarities and differences between the two marks.
If the marks are not substantially identical, they may be deceptively similar. This will be determined if it can be said that a person of ordinary intelligence would be deceived by the impressions gained from both marks.
Whether trade mark infringement has arisen entirely depends on your situation’s factual circumstances.
If you believe that someone has infringed your trade mark, you should seek the advice of a trade mark lawyer. A lawyer with expertise in trade mark law can identify whether you have a strong case for proving infringement. They will also advise how you might go about enforcing your exclusive rights.
2. Do the Exceptions to Trade Mark Infringement Apply?
There are several instances where unauthorised use of a trade mark does not count as infringement.
Generally, you cannot pursue legal action for infringement if another person is simply using your registered trade mark, and it:
- contains their own name;
- describes their good or service;
- indicates the purpose of their good or service; or
- assists their business with comparative advertising.
We explore each category in more depth below.
Your Registered Trade Mark Contains the Other Person’s Name
Another person or business may be able to use your registered trade mark if it contains their name or the name of their place of business. For example, a family-run computer repair store might be able to advertise their services using their family name McDonald, despite McDonald’s Inc. owning the exclusive rights to use the term ‘McDonald’s’.
However, the person or business must use your registered trade mark in ‘good faith’. This means that they must have acted honestly without attempting to deceive consumers by using your trade mark. Additionally, they should not be trying to take advantage of the reputation associated with your trade mark. The court will look at their conduct objectively to determine whether their use of your trade mark was in good faith.
Describes Their Goods And Services
Another person or business can use your registered trade mark to indicate the:
- kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of their goods or services; or
- time of production of their goods or the time of rendering their services.
For example, if you have protected the phrase ‘fresh fruit’ via a registered trade mark, it might be possible for another person to use the phrase to describe their fresh produce. Again, the person using your mark would have to act objectively in ‘good faith’.
A court will objectively look at a person’s conduct to determine whether they acted in ‘good faith’. Importantly, acting in good faith does not rely on someone’s personal belief of whether they acted honestly.
Indicates the Purpose of Their Goods and Services
Someone may also use your registered trade mark if it indicates the intended purpose of their goods and services. For example, a business that sells accessories for Samsung products might use Samsung’s trade mark when marketing their goods.
However, the ‘good faith’ requirement still applies. To use the same example, if the business claims that Samsung specifically manufactured the accessories, this may be considered an attempt by the business to take advantage of Samsung’s reputation, rather than usage in ‘good faith’.
Assists With Comparative Advertising
One of the last exceptions to trade mark infringement is comparative advertising. For example, a business in the same industry as your own might use your trade mark when advertising a specialised offer they claim is more competitive than your offering.
However, comparative advertising often portrays one business in a less favourable light to make the other business more appealing. In this instance, the other person’s use of your trade mark may mislead or deceive consumers. Furthermore, you might believe that business has been framed in an unfavourable light and suffers a loss as a consequence. In that case, you should consult a lawyer to see what legal avenues are available.
Key Takeaways
Before you decide to take legal action for trade mark infringement, you should consider whether you have a strong case for proving infringement. This typically involves getting the advice of a lawyer who can provide you with a breakdown of realistic outcomes from infringement proceedings. If you are considering whether to take legal action for trade mark infringement, our experienced IP lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Trade mark infringement occurs when someone uses a sign that is deceptively similar or substantially identical to your registered trade mark. If you suspect someone has infringed your trade mark, you should seek the advice of a trade mark lawyer.
If your registered trade mark contains the name of a person or business, they might be able to use the name without infringing on your trade mark. Additionally, it might also be allowable for someone to use your trade mark to describe or indicate the purpose of their goods and services. Finally, others can use your trade mark for comparative advertising.