So you go online and search your business name. Another website comes up in the search results with a suspiciously similar name selling the same types of products as you. It appears someone may have tried to copy your brand name with a view to taking advantage of the hard-earned reputation that is attached to your brand. You may be annoyed and tempted to contact them immediately, want to demand that they stop using the name or threaten court action.
However, things may not be as they seem and I strongly encourage you to contact a trade mark attorney for further advice and before taking any action. This is because the matter is likely not as clear cut as you would assume. If you accuse someone of infringement without having sufficient grounds you could be making unjustified threats in respect of which the other party would have legal remedies.
Before taking any action, you must, with the help of a trade mark attorney, determine whether:
- your trade mark is registered and in force. Intellectual property rights have expiry dates and a trade mark needs to be renewed every 10 years.
- you are the owner of the trade mark or an authorised user of the trade mark;
- the other party is actually infringing on your trade mark rights; and
- the other party has any authority to use your trade mark.
Trade mark infringement is the unauthorised use of a registered trade mark. The alleged infringing mark must be either substantially identical or deceptively similar to the registered trade mark 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 trade mark is registered.
To determine whether an act is infringement of a registered trade mark, the act must constitute use as a trade mark or as a badge of origin of goods and/or services. Furthermore, there are defences for inadvertent trade mark infringement and your trade mark attorney will need to help determine whether the use is actually infringing use.
The best way to protect a brand name is to register your trade mark. You can enforce unregistered trade marks in Australia but to do this typically requires a substantial amount of evidence to demonstrate that the trade mark has reputation. By contrast as soon as a trade mark is registered, you can enforce it against an infringer. It is worth noting that registration takes at least 9 months from the date of application.
If your trade mark attorney advises infringement is occurring, you may then approach the alleged infringer by a letter of demand to inform them of your trade mark rights and your concerns. This may open up the pathways for a successful negotiation.
If a settlement is not possible, there are a number of remedies provided by the courts. For example the court can issue an injunction to permanently stop the infringing behaviour and repeat offence. Moreover, the courts can add additional damages depending on how flagrant the trade mark infringement action is and the conduct of the offending party after being informed of the infringement.
If you believe your trade mark is being infringed, or if you have any other questions, please contact one of Baxter IP’s trade mark attorneys to discuss in more detail.
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