How to Avoid Trade Mark Infringement

Angus

• 29 June 2021
• 27 July 2021
• 5 min read

Before moving forward with registering a trade mark for your logo or catchy jingle, you will have to make sure no one else has already trade marked something similar. Infringement cases can be costly if you do not do your prior research. This article will explore: 

• what a trade mark is; 
• how infringement comes about; and 
• some of the key considerations you need to make to avoid trade mark infringement.

Trade Marks Explained

A trade mark is a phrase, sound or symbol which represents a company, product or service. Trade marks can be numbers, letters, words, sounds, and even smells, allowing consumers to identify a brand within the marketplace. Trade marks offer exclusivity and natural marketing. Once you have registered your trade mark, you will gain the intellectual property rights to use that eye-catching design as you please. As your business grows, so too will the value of your trade mark. 

Not all elements of your business’ brand are trade marks. Some assets commonly mistaken to be trade marks include company names and domain names. All company names require registration with the Australian Securities and Investments Commission (ASIC). Doing this will not give you any exclusive rights to that name, but you will need to do this if you plan on starting a business in Australia. As for domain names, these are given to you by private internet providers and are registered by auDa, the administrator of Australia’s .au domain. 

What Is Trade Mark Infringement?

Registering a trade mark is an investment in your brand. Infringement cases arise when a trade mark owner provides proof of:

• another party’s illegal use of their registered trade mark; and 
• the effect this has on brand recognition. 

Therefore, trade marks allow businesses to stop infringers from using their branding, though only when confusion arises regarding the source of the trade marked product or service. 

This can affect your business’ ‘goodwill’. Goodwill is how customers perceive your brand. 

For example, consider a scenario where a similar company is producing cheaper versions of your product while using your logo. There is a possibility that some customers will associate this low quality with your brand. This would affect your goodwill. 

Therefore, consider the suggestions below if you are starting a brand and do not want to be on the wrong side of these infringement cases.

How to Avoid Infringement

There are a few steps you can take to avoid infringing on an existing trade mark. The most important step is to ensure that your brand is truly unique. This means that: 

• you have not previously heard of your branding being used in the area;
• your research suggests that no other business is using your brand; and 
• your business name is not just a basic description of your service. 

To begin your research, you can conduct some simple Google searches or look at Amazon for an idea of other brands in your niche. You should also do a trade mark search. Above all, do not: 

• commit to a single idea before locking in a successful trade mark application; or 
• be careless with your research. 

The last step for avoiding infringement is applying to register the mark. You should only do this once you have ensured that there are no similar trade marks already in the marketplace. 

The Application Process

Once you have decided on a unique trade mark, you will need to apply for registration via IP Australia. The IP Australia site outlines the application process in five simple steps. You will need to:

1. make sure your trade mark is unique;

2. select what your trade mark will protect (i.e. which products or services);

3. research and ensure that your mark is available;

4. use a pre-application service, or apply using the standard online portal; and

5. exercise patience for at least four months while IP Australia examines your application. 

Key Takeaways

Now that you are aware of what trade marks can protect and how infringement can occur, remember that:

●  your company and domain names are not trade marked but registered with the ASIC;

●  proof of revenue or goodwill loss is necessary to create an infringement case;

●  you can avoid accidental infringement with a simple online search or by using a trade mark search engine; and

●  you should register your mark if it is not already in use.

If you have any questions about avoiding trade mark infringement, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions