How to Steer Clear of Trade Mark Disputes
George Raptis
Trade mark disputes are becoming increasingly commonplace as a result of the competitive nature of the consumer market. However, trade mark disputes often lead to unwanted legal proceedings that are both costly and time-consuming. This article outlines the different instances in which a trade mark dispute can arise, and how to avoid disputes.
Trade Mark Disputes
Trade mark disputes arise where someone has infringed or attempted to infringe on a trade mark owner’s exclusive rights. This is because trade mark owners hold the exclusive right to use their trade mark. Therefore, any person or entity who uses a sign that is substantially identical to the registered trade mark and related to similar goods and services is likely infringing on the trade mark owner’s exclusive rights.
Trade mark disputes can arise where the sign you use is deceptively similar to a registered trade mark. Trade marks must differentiate a good and service from others in the market. Therefore, a sign that gives consumers the impression that it is affiliated with another business can lead to a potential trade mark infringement. For example, a fast-food business named ‘MackDonalds’ would likely infringe on popular fast-food chain McDonald’s’ trade marked name.
Trade mark owners can oppose a sign which is likely to infringe on their exclusive rights. They can also pursue further legal action to cease the trade mark infringement from occurring.
Ways to Avoid Trade Mark Infringement
Whilst there is no foolproof way of guaranteeing that you will not infringe on another person’s trade mark, there are certain steps you can take to limit the potential for trade mark disputes arising.
Step #1: Conduct a Trade Mark Search
Before you submit your application to register a trade mark with IP Australia, you should conduct a trade mark search. When searching the Australian Trade Mark Search, you should look out for any trade marks that are similar or identical to the mark you intend to register. This is because IP Australia will likely reject an application for a trade mark that is identical or similar to an already registered trade mark. Therefore, by conducting a search, you can avoid applying for a trade mark that is already in existence and increase your chances of having IP Australia approve your trade mark application.
Step #2: Get Permission
If you want to use a registered trade mark, you can directly contact the trade mark owner to gain permission to use the trade mark. Since trade mark owners have the exclusive right to licence their intellectual property, they may licence the trade mark you wish to use to you. Licensing is where a trade mark owner (the licensor) agrees to let you (the licensee) use their trade mark over a specified period of time for an agreed price. Once the licensing period is over, the trade mark owner’s right to use the trade mark returns.
You must use the trade mark following the terms of the licencing agreement. If you do this, you will not infringe on the owner’s intellectual property rights. You can find the contact details of registered trade mark owners on the Australian Trade Mark Search.
Step #3: Responding to a Potential Infringement
You may receive a letter of demand concerning a potential infringement. In this case, you should stop any conduct that is alleged to be infringing. Doing so will give you time to seek out legal advice. This can help you to confirm whether you have or have not infringed on another’s intellectual property rights and will prevent you from committing any further infringements.
Timing is of the essence when letters of demand are received, so you should respond accordingly. However, there are instances where others send these letters without any basis for their claim. Upon seeking legal advice, you can ignore these letters. However, in the instance where you do cease conduct after receiving the false letter, which causes your business to suffer a loss, you may seek damages from the person who sent the letter. This is because unjustified claims of trade mark infringement are legally prohibited.
Key Takeaways
Although trade mark infringements can arise in a variety of ways, you can take steps to steer clear of trade mark disputes. For example, conducting a trade mark search before you apply for a registered trade mark will ensure that you are not applying for a trade mark concerning the same goods and services that a similar or identical trade mark already protects. You can also avoid trade mark infringement by also seeking permission from the trade mark owner to use their trade mark consistent with a licencing agreement. If you require further legal assistance with avoiding trade mark disputes, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The process of registering a business name is separate to trade marking a business name. Whilst it is possible that a trade mark may not protect a registered business name, it has become increasingly common for business owners to trade mark their business name upon registration.
It is not the responsibility of IP Australia to monitor the market for any potential infringements. Instead, trade mark owners themselves are responsible for protecting and enforcing their rights.