Five Tips For Managing Trade Mark Infringement

Emily Young

• 13 August 2021
• 30 August 2021
• 5 min read

Whether or not you have a registered trade mark, it is important to understand trade mark infringement. This is because trade mark law is designed to protect the legal rights of registered trade mark owners. Therefore, having some knowledge about the rights of trade mark owners can help you avoid disputes. To help you better understand trade marks, this article will take you through five key tips to avoid and manage trade mark infringement. 

1. What is Trade Mark Infringement?

The first of many tips for managing trade mark infringement is to understand what trade mark infringement actually is. Trade mark infringement refers to any unauthorised use of a trade mark concerning the relevant goods or services. Unauthorised use of a trade mark has the potential to cause confusion or deception about the origin of the trade mark. The owner of a trade mark has exclusive rights to its use. Anything that violates these exclusive rights is considered trade mark infringement. 

2. Types of Trade Mark Infringement

While trade mark infringement may refer to someone completely stealing your trade mark, this is not always the case. In some instances, trade mark infringement will be more subtle. For example, someone may use a logo that is similar to your trade marked logo. If the two logos are similar enough to cause confusion about who owns the trade mark, it is likely to constitute an infringement. In particular, if the two logos are for the same type of goods or services, it is more likely to be considered trade mark infringement. 

3. Proving Your Rights

If someone infringes on your trade mark, you will be required to show that you are its rightful owner. This is where trade mark registration comes in handy. While having a registered trade mark is not essential, it can make proving your rights to your trade mark much easier. This is because your trade mark will be on the public trade mark register for everyone to see, leaving little room for doubt about your rights to its exclusive use. This is more difficult where your trade mark is not registered.

4. Resolution Options

It is important to know your resolution options for trade mark infringement. As the owner of a trade mark, it is your responsibility to ensure that you enforce your rights as needed. Depending on the nature of the trade mark infringement, the best option for enforcing your trade marks will differ. For example, you may wish to send a cease and desist letter to ask the infringing party to cease using your trade mark. If they do not and you are required to take further action, it is also possible to launch legal proceedings for trade mark enforcement. Alternative dispute resolution options, such as mediation or arbitration, are cheaper alternatives to the court system. 

5. Possible Defences

In the instance you are involved with trade mark infringement, you should know the potential defences that you can use. Some of the main defences that might arise include using:

• your name or place of business in good faith;
• it descriptively in good faith;
• the trade mark in good faith to indicate the purpose of the goods or services;
• the trade mark for comparison; 
• your right to use the trade mark (such as with consent); or
• the trade mark due to prior use.

Each of these defences are outlined in the Trade Mark Act. It is also possible to file a cross claim to these defences or make an appeal if you are not happy with the findings in a trade mark matter.

Key Takeaways

Whether you have a registered trade mark or not, it is important to consider the implications of using a similar or identical trade mark to someone else. The owners of registered trade marks have exclusive rights to the use of their trade mark, including enforcement rights against infringing parties. To avoid involvement in a trade mark dispute, some of the key tips you should know about trade mark infringement include:

• what trade mark infringement is;
• types of trade mark infringement; 
• how to prove your rights to a trade mark;
• dispute resolution options; and
• possible defences.

If you find yourself involved in a trade mark infringement dispute and need assistance, get in touch with our experienced IP lawyers. You can contact them on 1300 657 423.

Frequently Asked Questions