Tips to Avoid Appearing in a Trade Mark Dispute

George Raptis

• 1 September 2021
• 6 September 2021
• 6 min read

As a trade mark owner, you would want to do everything within your capacity to avoid a trade mark dispute given the time and costs that are typically involved. A trade mark dispute may arise in the instance where someone claims that you have committed trade mark infringement. Alternatively, they may have a reasonable ground to reject your trade mark application. To stay clear of these issues, this article provides different ways you can avoid appearing in these trade mark disputes. 

Understanding Trade Mark Infringement

Under the Trade Marks Act, trade mark infringement arises if you use a sign that is substantially identical with or deceptively similar to another trade mark. Likewise, this trade mark relates to the same goods and services in which the original trade mark is registered. For example, a tech company that manufactures smartphones and uses a half-eaten apple as their logo would likely infringe on the trade mark rights of Apple Inc. 

However, there are some instances where it is permissible to use a trade mark without committing trade mark infringement. Where a court finds that you have acted in good faith,  using a trade mark without the trade mark owner’s authorisation may be permissible when you: 

• use a sign that contains your own name;
• describe your goods or services;
• indicate the purpose of your goods; and
• use the sign for comparative advertising. 

Your actions may not fall neatly into this definition of trade mark infringement or any of its exceptions. Though, there is still a chance that you may have committed infringement. For this reason, it would be wise to seek legal advice to ascertain whether you have likely committed trade mark infringement. 

Ways to Avoid Trade Mark Infringement

There are several ways you can avoid trade mark infringement, including by:

• seeking permission;
• conducting a trade mark search; and
• understanding the grounds for opposition.

Seeking Permission to Use a Trade Mark

If you ever want to use a registered trade mark that you do not own, you should seek the permission of the trade mark owner. Often, owners may willingly consent to your use of their trade mark, particularly if a licensing agreement is in place. 

Licensing is where an owner agrees to let you use their trade mark over a specific period for an agreed price. Once the licensing period ends, you no longer have the right to use the trade mark.

By strictly following the licencing agreement, you can avoid infringing on the trade mark owner’s intellectual property rights. 

You may now be thinking, where can I find the owner of a trade mark? Luckily, the Australian Trade Mark Search is a publicly available register that details the contact information of different trade mark owners. On the search, you can easily find an owner by searching for the trade mark you intend to use.

Conduct a Trade Mark Search 

Before you apply for a registered trade mark, you should search to ensure that you do not apply for an identical or similar trade mark that has already been registered. By conducting a thorough search of the Australian Trade Mark Search, you can identify potential marks that are similar or identical to your own. Likewise, you can make changes according to your application. Doing so will not only increase your chances of successfully submitting a trade mark application, but will also help you avoid committing trade mark infringement later. 

Understanding Grounds for Opposition 

Another way you may leave yourself susceptible to a trade mark dispute is by committing a ground for opposition. If you apply for a registered trade mark, any third party can oppose your application on several grounds or reasons within the Trade Marks Act. 

There are over 10 grounds for trade mark opposition. Indeed, you can find a summary of some of the most common grounds in the table below. 

Ways to Avoid Grounds for Opposition

There are such a wide range of grounds upon which a third party can oppose your trade mark application. Indeed, it would be wise to seek legal advice early. An expert trade mark lawyer can provide you with more comprehensive tips to avoid leaving your application susceptible to trade mark opposition. They can identify any shortfalls in your application and provide you with greater certainty if an opposition does arise. 

Key Takeaways

A trade mark dispute can arise if you commit trade mark infringement or if a third party opposes your application. To avoid such disputes, you should:

• seek permission to use a registered trade mark;
• conduct a trade mark search; and
• seek legal advice early to avoid grounds for opposition.

For help with avoiding entering a dispute or other trade mark legal assistance, contact our experienced IP lawyers on 1300 657 423. 

Frequently Asked Questions