The Basic Elements of Trade Mark Enforcement

George Raptis

• 2 August 2021
• 2 August 2021
• 5 min read

Registering a trade mark gives you the exclusive right to use, license, and sell the trade mark. However, it is your responsibility as a trade mark owner to conduct trade mark enforcement. If you fail to enforce your intellectual property rights concerning your trade mark, you run the risk of enabling the infringer to damage your business’ reputation. This article outlines the key steps you should take to enforce your trade mark and common strategies trade mark owners use to handle trade mark infringement. 

1. Be Proactive 

Your very first port of call should be taking preventive measures to protect your trade mark from possible infringement. For registered trade marks, you should always use the reserved symbol ‘®’ to notify others your branding is protected. You might also consider using digital security measures like watermarks to prevent potential infringement. These symbols alone may not comprehensively protect your trade mark from infringement. However, they are small measures that you can take to prevent your trade mark from being misused. 

2. Monitor For Infringement 

A common misconception amongst trade mark owners is that IP Australia monitors and polices the marketplace for potential trade mark infringements. IP Australia will not approve a trade mark application that is the same or too similar to your registered trade mark. However, it is your responsibility as a trade mark owner and not IP Australia’s responsibility to take action if someone has infringed on your exclusive rights. 

Trade mark infringement occurs when someone uses your trade mark without seeking your permission as the trade mark owner. 

To deal with any potential infringements, trade mark owners usually devise an enforcement strategy. Primarily, these strategies deal with detection methods such as reviewing the products sold and advertised by your competitors or conducting regular internet searches to identify any misuses of your trade mark. You should also regularly search the Trade Mark Register, given you have a two-month window to oppose any trade mark applications which you believe to be similar to your own trade mark. 

3. Selective Enforcement 

If you have identified a potential trade mark infringement, you should consider whether to take enforcement action given the expenses and delays associated with legal action. 

For example, suppose you have a registered trade mark protecting your business in the hospitality industry. In that case, it might not be commercially viable to pursue legal action where a similar trade mark has been used by a business in a different industry. On the other hand, if a competitor in the same industry has used your trade mark to endorse their own business, you would likely seek to pursue legal action.

When deciding to enforce your exclusive rights, it would be wise to seek advice from a lawyer who can clarify the strength of your claim and whether the potential infringement is worth pursuing. 

4. Issuing a Cease and Desist Letter 

If you have a strong case and decide to pursue legal action, you or a lawyer acting on your behalf can issue the potential infringer with a cease and desist letter. This is a legal document used by trade mark owners to notify potential infringers that you believe that they infringe on your exclusive rights. In the letter, trade mark owners can demand the potential infringer to stop misusing their trade mark. They can also set a deadline for response or action on behalf of the potential infringer. You should typically support this letter with details and evidence of the potential infringement. 

However, sending a cease and desist letter does not mean that trade mark infringement has actually occurred. It only notifies the other person that you believe that they have infringed on your exclusive rights. It is also important to note that sending a cease and desist on an unfounded claim of trade mark infringement is prohibited and can lead to unwanted legal proceedings. For this reason, you must act accordingly to the strength of your claim. 

5. Court Proceedings

If your letter to cease and desist has not been responded to and your case is strong enough to prove trade mark infringement, you can apply to have the matter dealt with in court. Given the expenses and delays in litigation, it is possible to settle the matter through alternative dispute resolution. However, in the instance where the potential infringer is not cooperative, you may consider court proceedings. At this stage of trade mark enforcement, it is wise to seek legal advice. This can help to ensure that you meet the standing requirements to have your matter heard. 

Key Takeaways

As a trade mark owner, it is ultimately your responsibility to enforce your trade mark. Many businesses that own trade marks devise enforcement strategies to deal with potential trade mark infringements. These include regularly monitoring the market for any misuses of a trade mark, choosing when or when not to pursue potential infringements and eventually the methods for pursuing a course of action against a likely infringer. If you require further legal assistance with trade mark enforcement, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.  

Frequently Asked Questions