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Trademark Infringement Australia - Breach of Trademark Guide

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Trademark infringement is a specific type of intellectual property (IP) infringement where someone uses a trademark (e.g., a name, logo, or slogan) that is identical or confusingly similar to a registered trademark without permission. Trademark infringement is usually connected to goods or services that are competing with the original. This can lead to confusion among consumers about the source of the goods or services, potentially damaging brand reputation and causing economic harm.

What is a Trademark?

A trademark is a kind of intellectual property (IP) that legally protects your brand and differentiates your product or service from someone else’s. You own the particular element that makes your brand yours. Registered trademarks (also referred to as registered trademarks) can be used to protect logos, phrases, colours, and even smells and movements.

There are different kinds of trademarks for different elements. Protecting various elements of your brand ensures its uniqueness, safeguarding the importance of your large or small business. Below is a table of famous trademarks, and which category they belong to.

Kind of Trademark Description Example
Word or phrase Words, numbers, letters, or phrases "Adidas"
Non-English Non-English words in any script "Samsung"
Logo A visual design, possibly including words Target bullseye logo
Series Multiple variations of the same basic trademark "Colgate Sensitive", "Colgate Total"
Colour A specific colour or combination of colours Tiffany & Co. blue
Shape A 3-D shape The Coca-Cola bottle
Sound A sound or sequence of sounds The MGM lion's roar
Scent A distinct smell Freshly cut grass scent for tennis balls
Movement A moving animation or short video M&M's characters walking

One of the main benefits of trademarking your brand is stopping other people and companies from using your colour, name, logo, or whatever you have protected. To do so would constitute a trademark infringement. That’s why you’ll need to register with IP Australia, our government’s intellectual property law administration agency.

What Is Trademark Infringement?

trademark infringement guide, brisbane
trademark infringement guide, brisbane

In short, trademark infringement happens when someone else uses your registered trademark (or a significantly similar element) without your permission. The owner of a registered trademark can take legal action against anyone who infringes on their rights. These cases are usually civil suits heard in the Federal Court or the Federal Circuit Court.

What if you’re the one who infringed on someone else’s trademark? It could have been an honest mistake, but you’ll still need legal advice to understand the consequences.

An easy way to avoid trademark infringement is by searching for existing trademarks. Before you register your trademark, you need to find out if your brand, colour, logo, or element of these has been registered. You can contact our team at Macmillan Lawyers and Advisors to assist you with this process.

What is IP Infringement?

In Australia, intellectual property (IP) infringement happens when someone uses another's protected intellectual property without their permission. This can happen in various ways, such as:

  • Using a registered trademark on your product or service that belongs to someone else
  • Copying a protected design, like a product shape or logo
  • Distributing copyrighted material like music, movies, or software without permission
  • Passing off your product or service as someone else's through misleading branding or marketing.
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IP Infringement vs Trademark Infringement

IP infringement is the broad umbrella term for violating someone's intellectual property (IP) rights. IP infringement can include unauthorised use of trademarks, patents, copyright material, or trade secrets, whereas trademark infringement only relates to trademarks. Think of it this way: IP infringement is like stealing someone's creative property in general, while trademark infringement is like stealing their specific brand identity.

What is the Test for Trademark Infringement?

How can you tell if someone has infringed your trademark? Under the Australian Trade Marks Act 1995, the tests include assessing whether someone used a symbol that's either very similar or misleadingly close to your trademark, especially if they're selling similar products or services.

Notably, this also applies if they use your well-known brand name and trademark for completely different products, because this can damage your brand reputation. Some trademark infringement tests are explained below:

Trademark Use

The alleged infringing symbol must function as a trademark, identifying the origin of goods or services similar to those registered under your trademark.

Similarity Matters

The infringing mark must either be substantially identical or deceptively similar to your registered trademark.

  • Substantial identity: Imagine side-by-side comparisons. Similarities and differences are weighed, focusing on the registered trademark's essential features and the overall impression of how similar the elements are.
  • Deceptive similarity: This test does not involve direct comparison. Rather, it focuses on the mental image of the registered trademark in the average person's memory and the impression created by the infringing mark.

This aspect considers:

  • The nature and characteristics of the goods/services involved
  • Their origin and purpose
  • Whether they are typically sold by the same businesses or within the same market segment
  • Whether they are thought of as the same by those who sell these goods or services.

Understanding these concepts is helpful, but working through the legal complexities of trademark infringement requires professional expertise. If you suspect trademark infringement, your best option is to contact Macmillan Lawyers and Advisors. We can help you assess your options, develop a strategy, and ensure your trademark rights remain protected.

Who can Sue for Trademark Infringement?

The holder of the intellectual property right can initiate legal action for infringement. However, in some cases, individuals with specific permissions can also file a lawsuit.

The authorised individuals may include:

  • Exclusive licensees: Those granted exclusive rights to use the IP by the owner.
  • Authorised users: Individuals or entities specifically permitted by the owner to use the IP in a specific way.

Before initiating legal action for IP infringement, you need to understand the potential costs, risks, and steps involved. Consider your goals, who to sue, potential for public disclosure, and document gathering. Be prepared for the infringer's defence and document exchange. In urgent cases, consider requesting immediate action through an urgent application. Seek legal advice to navigate the process effectively.

How to Respond to a Trademark Infringement Complaint

Facing an intellectual property (IP) infringement claim can be a little overwhelming. Here's a simplified response guide:

  • Did you unknowingly infringe? If you had conducted an IP search before using the infringed element, could the complaint have been avoided?
  • Do you own relevant IP? Clearly identify your own intellectual property, including business-critical information.
  • Did you obtain permission? Ensure you have proper "clearance" for any external source material used.
  • Maintain ownership records: Keep documentation proving your IP ownership or legal use.

Your intellectual property (IP) can be contested after you apply for protection or even after it's already granted. However, you have the right to defend your IP against such challenges.

What Are the Penalties for Trademark Infringement?

The Trade Marks Act (1995) outlines potential penalties if infringement is proven, although court action is often avoided.

  • Injunction: Ending the infringing use.
  • Financial compensation: The trademark owner may receive either:
    • Damages: Compensation for harm caused by the infringement.
    • Account of profits: The infringer's profits from the infringement.

These are not guaranteed, however. The court may withhold them if the infringer challenged the trademark or if the owner didn't use it in good faith.

Additional damages may be awarded based on the infringer's actions, the benefits they gained, and the need to deter future infringements. Note that this is a general overview, and court decisions can vary.

How to Make a Trademark Infringement Complaint

If you suspect trademark infringement, gather evidence like screenshots, links, and details of the infringing activity. Contact the infringer directly and request that they stop using your trademark immediately. If this is unsuccessful, consider filing a formal complaint with the relevant trademark office or pursuing legal action.

Get Advice from Trademark Infringement Lawyers and Intellectual Property Lawyers Attorneys

Trademark Infringement FAQs

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Here’s our Trademark Infringement Guide for Brisbane, created by Macmillan Lawyers and Advisors. We make legal simple. For more information and set up a FREE 30-minute consultation, or visit our offices.

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