Trade Mark Infringement in Australia

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 Constitutes Trade Mark Infringement?

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

Types of Infringement

Direct Infringement (Section 120)

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

Indirect Infringement (Section 120)

This happens when someone uses a sign that is deceptively similar to your trade mark in relation to goods or services that are the same or closely related to those covered by your registration, where such use is likely to deceive or cause confusion.

Enforcement Options

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
Federal Court proceedings: Legal action for serious cases of infringement
Customs enforcement: Preventing importation of infringing goods

Defences to Infringement

There are several defences available to allegations of trade mark infringement:

Prior use: Using the mark before the registration date
Descriptive use: Using words in their ordinary descriptive sense
Geographic names: Bona fide use of geographic names
Personal names: Bona fide use of personal names

Remedies for Infringement

If infringement is proven, courts may award various remedies:

Injunctions: Orders to stop the infringing conduct
Damages: Compensation for losses suffered
Account of profits: Recovery of profits made by the infringer
Destruction of infringing goods: Removal of infringing products from the market

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

Getting Help

Trade mark infringement can be complex, involving detailed legal analysis and strategic considerations. 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.