Trade mark infringementTrade mark registration grants the owner exclusive rights for using that trade mark in respect of the goods and services it is registered for. Nowadays, many business owners understand the need and benefits of trade mark registration, but business owners must also be aware that registration is not the last step to protecting your brand. It is up to business owners to be watchful of potential trade mark infringement and to ensure timely action is taken to enforce their rights.
What is trade mark infringement?Trade mark infringement is the unauthorised use of a registered trade mark. A conduct will amount to trade mark infringement when a sign is used as a trade mark and is substantially identical or deceptively similar to a registered trade mark. As a trade mark owner, it is important to monitor the market and ensure that no third party is taking advantage of your IP rights or to take action quickly if you believe that they are.The registered owner of the trade mark may start legal proceedings against a party that violates its trade mark rights, and such conducts are heard in the Federal Court, Federal Circuit court, or the supreme court of an Australian state and territory.
How to identify trade mark infringement casesUnder Section 120 of the Trade Marks Act 1995 (Cth) a person infringes a registered trade mark by:
- Using a sign which is substantially identical or deceptively similar to a registered mark in relation to:
- Verified English translation of the basic patent application
- Notice of Entitlement (this can be prepared and signed by an Australian Patent Attorney)
- A copy of PCT Article 19 and PCT Article 34 amendments if not published during the international phase
- A copy of the International Preliminary Examination Report if not published during the international phase
- Using a “well-known” mark for unrelated goods and services to those of which the trade mark is registered for (trade mark dilution).
How to avoid trade mark infringementGuaranteeing that your trade mark is unique from the onset can save your business from needlessly allocating budget and time. You should perform your due diligence and contact a trade mark attorney to help you perform a preliminary search of previously registered trade marks and pending applications before investing in developing a logo or a name.In other cases, the use of another person’s registered trade mark is not considered as trade mark infringement when the use is categorised as fair use.
Example of trade mark infringementA Cautionary Tale Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4)  FCCA 2025 In Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4)  FCCA 2025  James Christian, the proprietor of an online vitamin business called A-sashi Vitamins (a spin from the Japanese beer Asahi), incorporated and registered a business name, two domain names and a Facebook page bearing the word “A-sashi”.Nestlé, who owned a range of trade marks which contained the word MUSASHI in relation to performance vitamins and nutrition products, sued Christian and sought to cease the production of the A-sashi supplements. The court ruled that the ‘Sashi’ in both trade marks was similar enough for consumers to be confused into thinking that the products of both lines were connected. After an unsuccessful appeal, the court ordered Christian to pay Nestlé for damages. As of 2016, Christian was revealed to be still under debt to Nestlé.
This trade mark infringement case underlines the importance of having an original mark and performing a trade mark search that covers both similar and identical trade marks. A trade mark attorney specialises in this type of searches and will be able to assess the strength of your mark.