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The owner of a registered trade mark has the exclusive rights to use the trademark and authorise others to use the trademark in relation to the goods and/or services in respect of which the trade mark is registered.
The registered owner of a trade mark also has the right to obtain relief under the Trade Marks Act 1995 (Cth) if the trade mark has been infringed.
If a third party uses a registered trademark without authorisation from the registered owner, the third party may be infringing the exclusive rights of the registered owner.
Section 120(1) of the Trade Marks Act 1995 (Cth) states:
“A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered”.
Use of an alleged infringing mark must be use as a trademark. Various defences exist under Sect. 122 of the Act which include bone fide use of a sign to indicate a characteristic of the goods/services.
The alleged infringing mark must be either substantially identical or deceptively similar to the registered trademark, and be used upon or in relation to goods or services of the same description or closely related to goods or services in respect of which the trademark is registered.
The test for review of the marks under substantial identity is based on a side by side comparison of the respective marks, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
The test for deceptive similarity of marks does not involve a side by side comparison. The issue is not abstract similarity but deceptive similarity. The test is therefore between, on the one hand, the impression based on recollection of one mark that a person of ordinary intelligence and memory would have; and, on the other hand, the impressions that such a person would get from looking at the second mark.
This is assessed by taking into consideration the following circumstances:
Once we become aware of instances of unauthorized use of a registered Trademark, it is usual practice to send a ‘letter of demand’ to the infringing party. The letter of demand can be prepared in a number of ways depending on the objective of the Trademark owner. This is a pre-condition to commencing litigation in the Federal Court.
In some cases where it is essential to prevent or stop alleged infringing use immediately, we can file an Interlocutory Injunction with the Federal Court. These type of actions generally require the applicant to show (i) there is a serious issue to be tried, (ii) without an injunction, the plaintiff will suffer injury for which damages will not be an adequate compensation, and (iii) the balance of convenience favours such relief.
Most if not all litigation is commenced in the Federal Court or Federal Circuit Court, although it is possible to use the Supreme Court of a State. In part, the reason for this is that most trademark litigation also involves complimentary actions brought under misleading and deceptive conduct provisions of the Competition and Consumer Act 2010 (Cth) (Schedule 2 Section 18), and the common law tort of ‘passing off’.
Subject to any agreement between a registered owner of a registered trade mark and an authorised user of the trademark, the authorised user may bring an action for infringement of the trade mark:
If the authorised user brings an action for infringement of the trademark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings.
The Trade Marks Act provides protection for registered trade Marks. Establishing registration is straight forward because a registered Trade Mark will be entered on the Register of Trade Marks.
If a trade mark is not registered (unregistered Trade Mark at Common Law), an individual will have to rely on the passing off tort under common law, the elements of which are more difficult to establish, generally requiring:
The relief that a court may grant in an action for infringement of a registered trade mark includes an injunction, which may be granted subject to any condition that the court thinks fit, and at the option of the plaintiff but subject to section 127 (where the defendant has applied to the court for an order directing the Registrar to remove the trademark from the register for those goods/services), damages or an account of profits.
A court may include an additional amount in an assessment of damages for an infringement of a registered trademark, if the court considers it appropriate to do so having regard to a number of factors including: