Trade Mark Infringement in Australia: Your Rights and Remedies

Trade mark infringement occurs when someone uses a trade mark that is identical or substantially similar to a registered trade mark without permission. In Australia, understanding infringement is crucial for protecting your brand and taking appropriate enforcement action when necessary.

What Is Trade Mark Infringement Under Australian Law?

Under the Trade Marks Act 1995, infringement occurs when a person uses a trade mark that is:

• Substantially identical to or deceptively similar to a registered trade mark
• Used in relation to goods or services that are the same or closely related
• Used in the course of trade without the owner's consent

Infringement rights flow from registration. If you have not yet registered your mark, your first step should generally be to file a trade mark application, since an unregistered mark relies on the more difficult common law action of passing off and the Australian Consumer Law rather than the statutory infringement action.

Types of Trade Mark Infringement Under the Trade Marks Act 1995

Use on the Same Goods or Services (Section 120)

This occurs when someone uses a sign that is substantially identical with, or deceptively similar to, your registered trade mark in relation to goods or services that are the same as those covered by your registration.

Use on Similar or Closely Related Goods or Services (Section 120)

This happens when someone uses a sign that is substantially identical with, or deceptively similar to, your trade mark in relation to goods or services that are similar or closely related to those covered by your registration, unless that person can show the use is not likely to deceive or cause confusion.

Well-Known Trade Marks (Section 120)

For trade marks that are well known in Australia, the Act extends infringement to the use of a substantially identical or deceptively similar sign even on unrelated goods or services, where the use would indicate a connection with the registered owner and would be likely to affect the owner's interests adversely.

How to Enforce Your Trade Mark Rights in Australia

If you believe your trade mark is being infringed, you have several enforcement options available:

• Cease and desist letters: Often the first step in resolving infringement
• Negotiation and settlement: Cost-effective resolution through direct discussion, which may include undertakings, coexistence arrangements or a licence
• Court proceedings: Federal Court action for serious or unresolved cases of infringement
• Customs enforcement: Lodging a Notice of Objection with the Australian Border Force so that suspected counterfeit imports can be seized at the border
• Marketplace and platform takedowns: Using the brand-protection procedures of online marketplaces and social media platforms to remove infringing listings

The right sequence depends on the strength of your registration, the scale of the infringing conduct and your commercial objectives. In many matters, a well-founded letter of demand resolves the issue without any court involvement.

Sending a Cease and Desist Letter for Trade Mark Infringement

A cease and desist letter, or letter of demand, is usually the first formal enforcement step. Before one is sent, your trade mark attorney will typically:

1. Confirm that your registration is in force, covers the relevant goods or services, and is not vulnerable to counter-attack — for example, removal for non-use;
2. Gather and preserve evidence of the infringing use, such as dated screenshots, sample purchases, advertising and packaging;
3. Assess whether the use is substantially identical or deceptively similar to the registered mark, and whether any defence is likely to apply;
4. Draft a letter that identifies the registration, describes the infringing conduct, sets out the demands — for example, ceasing use, removing stock and listings, and providing written undertakings — and gives a clear deadline for response.

Realistic outcomes range from prompt compliance and signed undertakings, through negotiated settlement or coexistence, to escalation if the other side disputes the claim. Care is needed in drafting: Australian law provides a cause of action for unjustified threats of trade mark infringement proceedings, so demands should only be made on a properly assessed foundation — a key reason to have a registered trade mark attorney prepare the letter rather than sending one yourself.

Defences to Trade Mark Infringement Claims

There are several defences available to allegations of trade mark infringement, including under section 122 of the Trade Marks Act 1995:

• Good faith use of own name: Using your own name, or the name of your place of business, in good faith
• Descriptive use: Using words in good faith in their ordinary descriptive sense, for example to indicate the kind, quality or geographic origin of goods or services
• Prior use: Continuous use of the mark from before the registered mark's priority date or first use
• Comparative advertising: Using the registered mark for the purposes of genuine comparative advertising
• Exercise of a registered right: Use in exercise of a right to use a trade mark given under the Act

If you have received an infringement allegation, do not ignore it — but do not assume it is well founded either. A trade mark attorney can assess whether the registration relied upon actually covers the conduct complained of, and whether a defence or counter-claim, such as removal of the registration for non-use, is available to you.

Remedies Available for Trade Mark Infringement

If infringement is proven, courts may award various remedies:

• Injunctions: Orders to stop the infringing conduct, including interim injunctions in urgent cases
• Damages: Compensation for losses suffered by the trade mark owner
• Account of profits: Recovery of the profits made by the infringer from the infringing conduct
• Additional damages: In appropriate cases, courts can award additional damages where the infringement was flagrant
• Destruction or delivery up of infringing goods: Removal of infringing products from the market

Damages and an account of profits are alternative financial remedies — a successful owner elects one or the other, not both. Damages aim to compensate the owner for its loss, for example lost sales or a notional licence fee, whereas an account of profits strips the infringer of the gains attributable to the infringement. Which election is more valuable depends largely on the evidence available about the infringer's sales and margins, and it is a key strategic decision in any proceeding.

Online and E-commerce Infringement

A growing share of infringement now happens online — counterfeit goods sold through marketplaces such as Amazon, eBay and Alibaba, copycat listings, look-alike social media accounts and infringing domain names. Most major platforms operate brand-protection programs that allow registered trade mark owners to have infringing listings removed, and a registration is generally the key that unlocks these procedures. Learn more about brand protection in digital marketplaces and the relationship between domain names and trade marks, including options for dealing with domains registered in bad faith.

How Long Does Enforcement Take, and What Does It Involve?

Every matter is different. Many disputes are resolved within weeks through a letter of demand and negotiated undertakings. Contested matters that proceed to court typically take much longer — often a year or more to reach a final hearing — although interim injunctions can restrain serious conduct at an early stage. The investment required depends mainly on how strongly the other side contests the claim and how quickly a commercial resolution can be reached, which is why an early, realistic strategy assessment from your attorney is so valuable.

International Considerations

Trade mark rights are territorial, meaning registration in Australia only provides protection within Australia. For international protection, consider:

• Filing in individual countries where you operate
• Using the Madrid Protocol for efficient multi-country filing
• Understanding local infringement laws in each jurisdiction

Frequently Asked Questions

What is trade mark infringement?

Trade mark infringement is the unauthorised use, in the course of trade, of a sign that is substantially identical with or deceptively similar to a registered trade mark, in relation to goods or services covered by, or closely related to, the registration, under the Trade Marks Act 1995.

How do I take action against trade mark infringement in Australia?

No government body polices infringement on your behalf — enforcement is up to the owner. The usual path is to gather evidence, have a registered trade mark attorney assess the strength of your position, send a letter of demand, and escalate to court proceedings only if needed. For counterfeit imports, a Notice of Objection can be lodged with the Australian Border Force; for online listings, platform takedown procedures are often the fastest route.

What are the penalties for trade mark infringement in Australia?

Civil infringement leads to remedies such as injunctions, damages or an account of profits and, in flagrant cases, additional damages. Separately, the Trade Marks Act 1995 contains criminal offences for conduct such as counterfeiting registered trade marks, which can attract fines and imprisonment — these are prosecuted by the authorities rather than pursued in a civil claim by the owner.

How Baxter IP Can Help You Enforce Your Trade Mark

Trade mark infringement can be complex, involving detailed analysis of the register, the marketplace and your commercial position. If you believe your trade mark is being infringed, or if you've been accused of infringement, it's important to seek professional advice promptly.

Our experienced trade mark attorneys can help you understand your rights, assess potential infringement cases, and develop an appropriate enforcement strategy to protect your valuable brand assets.