Trade Mark Infringement

Trade Mark infringement is a common but unfortunate part of doing business, particularly in the online world.

Once a brand acquires trust and reputation, it is very easy for others to capitalise on this asset by unauthorised use.

Common forms of infringement

All of these activities are examples of infringement under Commonwealth Trade Marks Legislation (Trade Marks Act 1995 (Cth)) and civil and criminal penalties apply to persons (including corporations) who engage in this conduct.

There are additionally, two other forms of trade mark protection afforded to businesses irrespective of whether a trade mark is registered or not:

a) A claim for Misleading and Deceptive Conduct under the Competition and Consumer Act 2010 (Cth);

b) A claim for passing off at common law.

Implying certain goods or services

Provided by or supplied by one company or another when they are not;

The importation of counterfeit

or fraudulent goods from overseas (usually China);

The use of a deceptively or confusingly similar trade mark

As a ‘badge of origin’ in the supply of goods or services that may not be identical but is sufficient to cause confusion in the marketplace

These alternate grounds for proceedings may be effective even in the instance of a registered trade mark being held by the aggrieved party.

The key is to act promptly and fairly in dealing with infringement and seeking advice from a lawyer familiar with Trade Marks law or a Patent or Trade Mark Attorney is often the best solution.

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What should I do if my trade mark is infringed?

If you notice an instance of your trade mark being infringed, you should immediately seek advice from a qualified professional. A trade marks lawyer or attorney (a specially trained legal professional in the area of trade marks) can advise you further on whether the conduct at hand constitutes infringement and additionally whether a letter or demand should be issued.

It is dangerous to send a Letter of Demand to an alleged infringer if you are not certain that their conduct constitutes trade mark infringement. The reason for this is that under the Trade Marks Act 1995 (Cth) special provisions provide for damages to be awarded to parties where a groundless threat has been issued.

How much does it cost to sue a party for trade mark infringement?

The costs to sue a party for infringement are significant when compared with other avenues for dispute resolution. The costs incurred will comprise of the following:

  • Professional Advice: Fees from solicitors, attorneys etc;
  • Court filing costs
  • Administrative costs (ie. Clerical Tasks)
  • Fees for Counsel: Normally fees for barristers to appear are significant and may often be thousands of dollars per day (or more)
  • Costs awarded against the unsuccessful party: In the event that a party is unsuccessful in an infringement proceeding, the winning party may make an application for their legal costs which could potentially run into the tens or hundreds of thousands of dollar range depending on the scale of litigation and forum chosen.

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