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trademark infringement

Proving a Trademark Infringement Has Occurred

It is important to protect yourself from any trademark infringement upon successfully getting your trademark registered. If you are unsure about the trademark registration process, you can read about how to get a trademark here.

It is important to speak with a qualified lawyer before beginning legal action for trademark infringement. The first step in establishing legal standing is to prove that your intellectual property rights subsist in law.

Your rights in the trademark will exist if:

  • Your trademark is still in force; and
  • You are the owner or entitled to act on behalf of the owner of the trademark.

Proving Your Trademark is Still in Force

In respect of whether your mark is still in force, you need to be conscious of how long trademarks last. Under Australian law, trademarks are active for ten years from the date they have been filed. This means trademarks need to be renewed with IP Australia before the due date to stay in force.

Trademarks which have expired or have been removed for non-use will lose their effectiveness. A trademark will be removed for non-use when it is not actively used. Anyone can oppose the activeness of your trademark by making an application to IP Australia. The notion behind the non-use policy is to deter people or companies from registering trademarks for the sole purpose of hoarding them away from competitors who may make active use of them.

If you have moved houses or changed your address since your trademark registration date, and not updated your details with IP Australia, there is a risk that your trademark has become expired. You may have missed your renewal date, or missed your opportunity to respond to a non-use application. If this is the case, get in touch with LegalVision’s trademark lawyers who will be able to assist you.

Proving Ownership of a Trademark

Proving ownership of a trademark is less complicated with the trademark registration process. However, if you are acting on behalf of someone, or you wish for someone else to act on your behalf, you may need to prove that there has been an adequate assignment of intellectual property interests. If you would like advice on this matter, please contact us.

Enforcing Your Right

So when does trademark infringement occur? You will need to prove that:

  • The infringement involved the use of a trademark; and
  • The infringing trademark was used in connected with identical or similar goods and/or services to which you engage in; and
  • The infringing trademark was substantially or deceptively  similar or identical to your trademark

There may also be instances where trademark infringement has not occurred, for example, if the suspected infringer can prove one of many defences to trademark infringement.

Why  Should You Seek Professional Advice?

The laws surrounding trademark infringement are not as simple as other areas of law. Issuing letters of demand or making unfounded claims to trademark infringement is prohibited under the Trade Marks Act 1995 (Cth) and can result in liability for damages. You should consult a trademark lawyer to understand your rights, remedies, cost and likelihood of making a successful claim.

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