Trade Mark Infringement

Registration of a trade mark gives its owner the right to take legal action against someone else who is using the same or similar trade mark in relation to the same or similar goods as those for which the trade mark is registered. Apart from conferring “ownership” of a trade mark on the registered owner, this is the main purpose and characteristic of a trade mark registration.

However, it is for the owner of a trade mark to “police” its trade mark rights and threaten legal action and where necessary take legal action to prevent someone else using a conflicting trade mark. The Trade Marks Office (IP Australia) will not do this for you, nor will they take action to prevent any infringements of your trade mark once they come to light.

Typically, infringement proceedings are commenced by the trade mark owner sending a letter to the person they believe is infringing their registered trade mark. This letter is referred to as a “Cease & Desist” letter.

The Cease & Desist letter should set out the rights that the trade mark owner has in the trade mark, including providing details of any registered trade marks it has. It will then outline the conduct of the addressee of the letter (usually the alleged infringer) concluding that they are infringing and must stop infringing the trade mark – that is, they must cease and desist from using the trade mark.

The Cease & Desist letter will usually request a response from the addressee on or before a set date – anywhere from one to three weeks. It will then conclude with a set of demands, which if not met will result in further action which may include commencement of a Federal Court action.

It is not unusual for the trade mark owner to also send a “Without Prejudice” letter at the same time as the Cease & Desist letter, or at some appropriate later point in the proceedings. The Without Prejudice letter sets out what the trade mark owner is willing to accept as settlement for the infringement, which if accepted, or negotiated, between the parties may be recorded in a Settlement Deed.

The Settlement Deed may require the alleged infringer to pay some financial compensation to the trade mark owner and reimburse it for some of its legal costs incurred in the proceedings, as well as obtaining contractual undertakings from the alleged infringer that it cease the infringing conduct and will not continue to infringe the trade mark.

If the parties cannot resolve their differences, the trade mark owner may then commence trade mark infringement proceedings, usually in the Federal Court. Needless to say, the commencement of such proceedings are costly, as is the cost to defend them. As a claimant (trade mark owner) you can exit the proceedings at any point but will be liable for the respondent’s (alleged infringer) legal costs. As a respondent, you cannot exit the case without the claimant’s agreement, which will is likely to involve payment of damages and legal costs to the claimant in return for a release from the proceedings.

If the matter is not settled it will go to trial, with all the cost and lost management time that is associated with court actions.

It is with infringement proceedings in mind that we register your business’ trade marks. That is, in an infringement action, the respondent (alleged infringer) will often seek to exclude liability by arguing that the trade mark registration is invalid. Accordingly, a counter-claim for invalidity may be raised by the claimant. Any mistakes made at the point of application for registration of the trade mark may come back to haunt the claimant; hence why it is vital to ensure that every step in the path to registration of a trade mark is done in accordance with the Trade Marks Act 1995 (Cth). In some instances this can mean being more strict than the Trade Marks Office.

It is also worth noting that the infringement provisions in the Trade Marks Act 1995 (Cth) are “staged”. That is, if the alleged infringer is using the same or similar trade mark as a trade mark, for the same goods and/or services as those covered by the trade mark registration then no further enquiry is needed to establish infringement. We call this “Bang to Rights” infringement. Other defences may apply, but infringement has at least been established.

However, if the alleged infringer is using the same or similar trade mark as a trade mark, for similar (not the same) goods and/or services as those covered by the trade mark registration then the alleged infringer can escape liability for trade mark infringement if it can show that the allegedly infringing use is not likely to deceive or cause confusion. That is, if the goods and/or services on which the infringing trade mark is used are not the same as those covered by the trade mark registration, then the alleged infringer may be able to escape liability for trade mark infringement.

Therefore the goods and/or services for which you register your trade mark must be carefully considered when you apply to register you trade mark, so as to cover similar goods and/or services to those that you use your trade mark on, so as to sufficiently exclude competitors.

Call us for assistance with INFRINGEMENT today.

Download PDF

Not sure where to start?

We're here to make it easy. Call or email us today.

This is how we've helped others

  • Hanna Myllyoja

    "Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided. They have shown expertise beyond their size and (regional) location and an ability to stand their ground against their City counterparts: you get the quality of a city law firm partner but you are not charged the big city law firm rates. They are pro-active, commercially sensible and this has given me, as a busy in-house Corporate Counsel and Company Secretary, peace of mind in relation to SAI Global’s national and international IP Portfolio and other legal needs. "

    Hanna Myllyoja - Group General Counsel & Company Secretary, SAI Global Ltd (ASX:SAI)
    Read More >
  • Michael Bynon

    "Marshall Marks has recently filed a large number of trade mark applications for us and has a high level of success in terms of getting marks registered with the minimum of fuss and additional costs. They have well established processes that identify problems early on so that time and money is not wasted on problematic applications and deliver their services promptly in a courteous and professional manner. They have demonstrated a strong ability to handle a large and growing IP Portfolio in the very competitive drinks sector of the market. I would recommend them to any company that wants to get a grip on its IP."

    Michael Bynon - General Manager Business Development – Private and Exclusive, Kollaras & Co Pty Ltd
    Read More >
  • Dr Elizabeth Eastland

    "Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "

    Dr Elizabeth Eastland - Founder and Former CEO, iAccelerate, Current General Manager, Strategy, Market Vision and Innovation, CSIRO.
    Read More >
  • Craig Osborne

    "I am delighted to recommend Tim Marshall and the team at Marshall IP Group for all aspects of intellectual property and technology law. Marshall IP Group fills an important space in the legal market in regional Australia and Australian capital cities. The businesses that I am heavily involved in, RMB Lawyers and Unison Outsourcing, have both enjoyed excellent advice and customer service from Marshall IP Group in relation to trade marking our businesses and protecting our brand."

    Craig Osborne - Managing Partner, RMB Lawyers and CEO, Unison Outsourcing Pty Ltd
    Read More >
  • Tanya Van Der Water

    "Entering the world of trademarks and IP, as a means of protecting our brand both now and in the future, was met with an unclear understanding of where we could turn for assistance. Tim and his amazing team at Marshall IP Group have made the whole process a hassle free one and we confidently recommend their services to anyone wanting to add value to their brand and business. "

    Tanya Van Der Water - CEO, Buckaroo Leatherworks Pty Ltd.
    Read More >

Brands we've
worked with