{"id":6312,"date":"2021-08-24T12:24:08","date_gmt":"2021-08-24T02:24:08","guid":{"rendered":"https:\/\/trademark-registration.com.au\/?p=6312"},"modified":"2021-08-24T15:34:48","modified_gmt":"2021-08-24T05:34:48","slug":"enforce-rights-trade-mark","status":"publish","type":"post","link":"https:\/\/trademark-registration.com.au\/protection\/enforce-rights-trade-mark\/","title":{"rendered":"I Have Registered a Trade Mark. How Do I Enforce My Rights?"},"content":{"rendered":"\n

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.\u00a0<\/p>\n\n\n\n

Monitor the Trade Mark Register<\/h2>\n\n\n\n

Once you have registered a trade mark, you should monitor the Australian Trade Mark Online Search System<\/a> (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.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

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.<\/p><\/blockquote>\n\n\n\n

Identify Trade Mark Infringement<\/h2>\n\n\n\n

Before taking action to enforce your trade mark rights<\/a>, you must ensure that actual infringement has occurred. There can be negative consequences if you accuse someone of trade mark infringement<\/a> and are incorrect. There are three key things you will need to prove to establish infringement of your trade mark registration, including that the:<\/p>\n\n\n\n

  1. trade mark in question is substantially identical or deceptively similar to your registered trade mark;\u00a0<\/li>
  2. infringer is using the trade mark concerning identical or closely related goods or services; and<\/li>
  3. infringement is likely to deceive or cause confusion.\u00a0<\/li><\/ol>\n\n\n\n

    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.<\/p><\/blockquote>\n\n\n\n

    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. <\/p>\n\n\n\n

    Have a Plan<\/h2>\n\n\n\n

    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:<\/p>\n\n\n\n