Trade mark disputes typically arise from trade mark infringement. Trade mark infringement is the use of a trade mark that is substantially identical or confusingly similar to a previously registered mark. To address trade mark disputes a party can apply to have a trade mark invalidated on several grounds, and the outcome is the removal of the offending trade mark from the register, in addition to the possible award of damages to the aggrieved party. In cases where the copied trade mark is unregistered, the common-law tort of passing off and Australian Consumer Law may provide relief to the owner of the earlier used trade mark.
Trade mark registration awards the owner the right to enforce the mark and this includes taking action against an infringement. Different approaches can be used to resolve trade mark disputes. If a third party is infringing on a registered trade mark, a carefully worded Cease and Desist letter may be sufficient to deter infringement. If this action is insufficient and the other party persists in the use of offending trade mark, the owner of the registered trade mark may proceed to other dispute resolution options.
Parties on the receiving end of such a letter can provide arguments submitted in rebuttal, amend the class specifications indicated in the application, solicit a letter of consent from the original trade mark owner, initiate non-use proceedings against the trade mark owner or provide evidence of honest concurrent use. A trade mark attorney may provide advice on the most applicable and beneficial or, at the very least, the least damaging course of action in each particular case.
Alternative dispute resolution
Alternative dispute resolution offers advantages such as a shorter timeline and lower price than traditional trade mark litigation. In addition, positive lucrative outcomes may be obtained by both parties, such as coexistence, concurrent use, and licensing agreements. The Australian Federal Court demands that alternative dispute resolution must be sought first before pursuing trade mark litigation.
Negotiation is the most informal mode of alternative dispute resolution. In a negotiation, both parties can meet and discuss their issues. The parties jointly decide on an outcome that benefits both, and potentially damaging issues, such as infringement, can sometimes be converted into a strong business outcome, such as a brand licence. The results of negotiations are private and confidential. Mediation is similar to a negotiation, only a neutral third party is involved. The conflicting parties decide on the outcome.
In this mode of alternative dispute resolution, the parties consensually submit the matter to a panel of experts who will decide on the outcome of the dispute.
An arbitration involves an impartial third party making a decision on the dispute. Both parties accede to the decision regardless of their opinion of it. In this type of resolution, there is a winning party and a losing party. The proceedings are similar to that in litigation, with the arbitrator/s making the decision instead of the court. Arbitration is more expensive than mediation/negotiation but is less expensive than traditional trade mark litigation. Arbitration proceedings are private, but decisions are made available to the public.
Trade mark litigation
In other cases, a more aggressive route may be unavoidable. Trade mark litigation is the motion of taking disputes for ruling by the Federal Circuit Court, Federal Court or High Court of Australia. Before litigation, the following should be established:
- Check the validity of the infringement claim, which includes checking details of ownership of the original trade mark, relevant dates, such as priority and registration dates, renewal status, as well as the dates and details of the infringing mark.
- Determine the amount of available resources. Litigation can extend from months to years. Within this period, the corresponding attorney fees, as well as lost man-hours, also increase, and traditional trade mark litigation costs do add up. In addition, these hearings are available to the public, so the impact of the publicity on operations must be carefully considered.
- Decide on the goal for the court proceedings, whether in the form of monetary compensation, restriction from further infringement, or both.
- Identify each party involved in the infringement. Identify every person involved to prevent these parties from further committing infringement under a different entity.
Litigation can be a very complex process, and it can take years to receive a final decision.
A business almost inevitably encounters trade mark disputes regardless of whether it owns a registered trade mark or not. The question of which trade mark dispute resolution approach to take depends on the outcome acceptable to the party enforcing their rights. Not all disputes need to be taken to court, and a trade mark attorney with experience in different approaches to trade mark dispute resolution and in trade mark litigation can give careful advice on the pros and cons of each type of resolution and help identify the avenues of resolution that are most suitable.