Trade Mark Disputes in Australia: Expert Guidance from Baxter IP

Trade Mark Disputes in Australia: Expert Legal Guidance

Navigating trade mark disputes in Australia requires strategic expertise to protect your brand and resolve conflicts efficiently, whether through negotiation or litigation. At Baxter IP, we specialize in handling trade mark disputes, including infringement analyses, oppositions, cease and desist correspondence, and support for alternative dispute resolution or Federal Court enforcement. As a boutique, mid-sized IP firm and one of the leading non-publicly listed firms in Australia, we offer flexible, client-centric services without the overheads of larger firms. Our team collaborates with lawyers when needed, providing technical and strategic advice to achieve commercial outcomes.

Recognized for our excellence, Baxter IP's trade mark team includes specialists like Principal Chloe Cort, a qualified Australian and New Zealand trade mark attorney with international experience in brand protection across sectors such as engineering, high-tech, healthtech, cosmetics, entertainment, food & beverage, and hospitality. With a track record of 21 Australian trade mark oppositions and 8 foreign oppositions in FY24, Baxter IP helps clients from multinational corporations like Byte Dance and Carlsberg Breweries to startups manage their IP.

Expert Team Leadership

Dr. Qi Zhang, Principal at Baxter IP brings unparalleled expertise to trade mark dispute resolution, drawing on his international experience in intellectual property enforcement across Australia, the UK, and China. With a proven track record of delivering favorable outcomes for clients ranging from startups to multinational corporations, Dr. Zhang has successfully managed numerous high-stakes cases, including the 2025 non-use actions for Blissful Life Inc. against the BLISSFUL DIARY mark in the UK and Australia, and for Hangzhou Chongqun Electronic Business CO.,LTD against the VIOZON mark; the 2024 non-use actions for Ningbo Heyme Information Technology Co., Ltd against SOLPEX, Shenzhen Yucheng Technology Co., Ltd against TTRWIN, Huizhou Chaohe Electronic Technology Co., Ltd against ALDOM, Shenzhen Duobeitong Trading Co., Ltd. against DEWPETON, and Yiwu Lvxin Trading Co., Ltd against OLANLY; as well as oppositions for Yiwu CunFang Trading Co., Ltd. against SMIRY and Yanxu LIN against TrendPlain in Australia. His strategic approach has also resolved infringement allegations, such as those against Halibaba International Group Pty Ltd in 2024, consistently achieving efficient resolutions that protect clients, minimize risks, and align with commercial objectives, cementing Baxter IP's reputation as a leader in trade mark disputes.

Martin Earley, as a qualified Australian and New Zealand patent and trade mark attorney, brings extensive expertise to trade mark disputes, leveraging his over 30 years of experience in intellectual property law to navigate complex oppositions and contentious matters effectively. His role on the Trade Marks Committee of the Asian Patent Attorney Association, where he represented Australia, has honed his strategic insights into international trade mark practices, enabling him to advise clients on cross-border disputes with precision. Martin's background as a former Patent Examiner and Opposition Hearings Assistant at IP Australia provides a unique perspective on administrative proceedings, allowing him to anticipate examiner objections and craft robust arguments in trade mark oppositions. Clients benefit from his commercial problem-solving approach, which has led to successful outcomes in mediation, arbitration, and hearings, ensuring that trade mark disputes are resolved in alignment with broader business objectives while minimizing risks and costs.

Understanding Trade Mark Disputes and Infringement in Australia

Trade mark disputes typically arise out of an alleged trade mark infringement. Trade mark infringement is the use of a trade mark that is substantially identical or deceptively similar to an earlier 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.

Common scenarios include:

Trade mark oppositions challenging the registration of similar marks that may cause consumer confusion.
Validity challenges questioning whether registered IP rights should have been granted in the first place.
Commercial disputes between businesses and trade mark owners.

These matters can involve administrative proceedings at IP Australia and negotiation. We also support your lawyers in mediation, arbitration, or Federal Court actions. Early intervention is crucial to assess the strength of your trade mark rights, the scope of alleged infringement, and potential commercial impacts.

Before Considering Trade Mark Litigation: Initial Steps in Resolving Disputes

Trade mark registration awards the owner the right to enforce the mark and this includes taking court action against an infringing party. Various approaches can be employed 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 have the infringing material removed and to deter future infringement. If this action is insufficient and the other party persists in the use of an offending trade mark, or other form of branding, the owner of the registered trade mark may proceed with 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. Baxter IP trade mark attorneys provide advice on the most applicable and beneficial course of action in a particular case.

At Baxter IP, we evaluate new trade mark dispute matters from all angles to identify which line of attack or negotiation is most suitable and can respond flexibly to achieve desired commercial outcomes. Strategies include:

Conducting thorough infringement and validity analyses.
Drafting cease and desist letters that articulate the strength of your position while avoiding unjustifiable threats.
Advising on non-litigation strategies to negotiate settlements aligned with your business goals, such as by coexistence agreements or other commercial avenues.

For example, in a recent case for Jay Fink (S'WICH), we successfully filed a non-use action against blocking trade marks, removing citations and securing registration after legal arguments and consent was not forthcoming.

Trade Mark Litigation in Australia

In some cases an aggressive route may be unavoidable in which case we can support your legal teams, ensuring thorough preparation for court. 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 complex process, and it can take years to receive a final decision. We provide expert support to legal teams, ensuring thorough preparation for court.

Key Considerations When Facing Trade Mark Disputes

The strength and validity of the IP rights involved.
The scope and extent of alleged infringement.
Commercial impact and potential damages.
Urgency and need for interim relief.
Cost-benefit analysis of different proceedings.
Relationship preservation and future commercial opportunities.

Trade mark dispute resolution should be considered when discovering potential infringement, receiving a cease and desist letter, launching new products, negotiating licenses, during due diligence, or developing IP strategies.

Baxter IP's Approach to Trade Mark Disputes and Oppositions

Our experienced team handles all manner of dispute matters from infringement and validity analyses to cease & desist correspondence, opposition matters and support for legal teams conducting mediation, arbitration and Federal Court IP enforcement. We evaluate new IP dispute matters from all angles to identify which line of attack or negotiation is most suitable and can respond flexibly to achieve desired commercial outcomes.

How we approach trade mark disputes and oppositions:

Initial assessment of the dispute including analysis of IP rights, infringement allegations, validity issues, and commercial implications.
Development of strategy options considering enforcement, defense, settlement, licensing, or other commercial arrangements.
Evidence gathering and technical analysis including prior art searches, infringement analysis, and expert opinions.
Negotiation and settlement discussions aimed at achieving commercial resolution without protracted litigation where possible.
Formal proceedings including opposition filings, court actions, or alternative dispute resolution processes as required.
Ongoing case management and client communication ensuring transparency and alignment with business objectives throughout the process.

Baxter IP provides comprehensive IP dispute resolution services from initial strategy development through to final resolution. We understand that each dispute is unique and requires a tailored approach that considers the specific commercial context and client objectives.

Recent Successes

Recent successes include:

For CFL Australia Pty Ltd (bubble teas), defeating an opposition before the Japanese and Korean Patent Offices in a multi-jurisdictional dispute against Gong Cha.
For Portier Australia Pty Ltd (baby products), splitting an application to secure partial acceptance and pursuing international filings.
For RWZH RECHTSANWÄLTE on behalf of Rudolf Hensel GmbH (fire safety), overturning a refusal via case law arguments.
2025 - Successful non-use action in the UK and Australia for Blissful Life Inc. against BLISSFUL DIARY mark.
2025 - Successful Australian non-use action against Hangzhou Chongqun Electronic Business CO.,LTD of VIOZON mark.
2025 - Successful Australian non-use action for Shenzhen NeoTech Co., Ltd. against SKULL & CO. mark.
2024 - Successful Australian non-use action for Ningbo Heyme Information Technology Co., Ltd against SOLPEX mark.
2024 - Successful Australian opposition for Yiwu CunFang Trading Co., Ltd. (Opponent) in respect of SMIRY mark
2024 - Successful Australian non-use action for Shenzhen Yucheng Technology Co., Ltd. against TTRWIN mark.
2024 - Successful Australian non-use action for Huizhou Chaohe Electronic Technology Co., Ltd against ALDOM mark.
2024 - Successful Australian opposition for Yanxu LIN (Opponent) in respect of TrendPlain mark
2024 - Successful Australian non-use action for Shenzhen Duobeitong Trading Co., Ltd. against DEWPETON mark.
2024 - Successful Australian non-use action for Yiwu Lvxin Trading Co., Ltd against OLANLY mark.
2024 - We overcame allegations of trade mark infringement against our client Halibaba International Group Pty Ltd through dispute resolution.

Our IP dispute team includes attorneys with expertise in patent law, trade mark law, design law, and commercial litigation. We also work with technical experts, barristers, and other specialists when required to provide comprehensive representation.

Why Choose Baxter IP for Your Trade Mark Dispute Needs?

Intellectual property disputes are an inevitable part of business in today's competitive marketplace. Whether you're facing infringement of your IP rights or defending against allegations, having experienced representation is crucial for protecting your commercial interests and achieving favorable outcomes.

A business almost inevitably encounters trade mark disputes regardless of whether it owns a registered trade mark. 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 may be able to resolve the matter cost-efficiently.

With 717 active trade mark clients in FY24, including new wins like Wine Collective and Hankook Tyre Australia, our 2,000+ client base ranges from multinationals to startups. We offer large-firm expertise at mid-tier rates with capped fees, guided by values of dedication, transparency, and commercial focus.

Speak to a Trade Mark Attorney Today

If you're dealing with a trade mark infringement, opposition, or dispute, contact Baxter IP for a confidential consultation. Our trade mark attorneys are ready to guide you toward resolution.