Trade mark infringement in Australia

What is trade mark infringement?

The registered mark and its coverage are the starting point. In broad terms, infringement can arise where a person uses a substantially identical or deceptively similar sign as a trade mark for relevant goods or services. Different statutory tests apply in different circumstances, including where goods or services are related or a mark is well known.

The phrase “as a trade mark” matters. The question includes whether the sign is being used to indicate the source of goods or services. Not every mention of a word that appears in another party’s registration is necessarily infringing use.

Registration also has limits. The precise goods and services, any conditions and available defences need consideration. IP Australia’s guidance on rights given by registration provides background, but a particular dispute needs assessment on its facts.

Questions of international trademark infringement affecting a Sydney business, such as an overseas seller offering goods to Australian customers online, still begin with the Australian position. An Australian registration gives rights in Australia. Protection and enforcement in other countries depend on the law of each country and any rights held there, so those issues need separate consideration.

Examples of situations that need review

The following are illustrations of issues to investigate, not conclusions that infringement has occurred:

• A business begins selling similar products under a name that closely resembles a registered brand.
• A supplier puts a sign resembling another business’s registered logo on packaging.
• An online listing presents goods in a way that appears to use another party’s mark as the seller’s own brand.
• A former business partner continues using branding after the parties disagree about who owns or may use it.

In each situation, the relevant records and conduct matter. A screenshot without the product, date or context may not answer the question. Nor does a trade mark registration alone establish that every use of a similar sign can be stopped.

How to assess a suspected infringement

Check the registration

Confirm the registered owner, status, mark and covered goods or services. If your business uses the brand under a licence or acquired it in a transaction, the ownership and authorisation documents may also matter.

Use the trade mark number to locate the record in Australian Trade Mark Search. Keep a copy of the relevant details rather than relying on a remembered class number or an old certificate.

Examine the actual use

Record where and how the other sign appears. A product label, website heading, advertisement and passing reference may raise different questions. Note the goods or services offered and whether the use is directed to the Australian market.

Preserve the context. Keep dates, URLs, photographs, product details and relevant correspondence. If a customer has reported confusion, retain their original communication rather than rewriting it into a summary alone.

Compare the legal and commercial position

An assessment should consider the marks and relevant statutory tests, then connect that analysis to what you want to achieve. Stopping a planned launch, changing packaging and resolving a dispute with a longstanding supplier may call for different priorities.

Also consider what remains unknown. The other party may have an earlier-use position, a licence or another explanation that needs investigation before a demand is made.

If someone is using your brand

Effective trade mark enforcement starts with preserving the evidence and checking your own records. Identify the conduct you want addressed and what a workable outcome would look like.

We can review the claim, assess the available options and advise on communicating with the other party. A cease and desist letter may be appropriate in some matters, but its claims and requested commitments need to be justified.

Do not assume a strongly worded threat will improve your position. Australian law provides remedies in relation to certain unjustified threats. Obtain advice on the basis and wording of a proposed demand before sending it.

A response may involve discussion, a change to the disputed use, an agreement or court proceedings. Which path is suitable depends on the rights, evidence, urgency and commercial circumstances. If court is the right course, we can explain how to sue for trademark infringement, including the documents and evidence needed at each stage.

If you have received an infringement allegation

Keep the complete letter or email, attachments and envelope where relevant. Note when it arrived and any stated deadline. Do not assume that the sender’s interpretation of the law or the registration is correct.

Before agreeing to stop trading, pay money or sign an undertaking, understand what is being requested and the consequences. Equally, ignoring the letter can leave important issues unresolved.

Provide your adviser with the mark you use, when and how you began using it, relevant licences or agreements, and any application or registration records. Explain whether a response has already been sent or a discussion held.

Our guide on responding to a trade mark infringement allegation provides a useful starting point. If court documents have been served, identify them clearly when you contact us because the response obligations are different from ordinary correspondence. We can then explain what to do when sued for trademark infringement, including the steps and time limits that apply to your matter.

Defences and other answers to a claim

A claim may fail because the alleged conduct does not meet the infringement test. In other circumstances, a statutory defence or exception may be relevant. Issues such as prior use, the nature of the use and existing rights require careful examination.

Do not assume that registering a business name, using your own surname or acting without an intention to copy automatically answers the claim. Each point must be assessed against the applicable requirements and evidence.

See our defences to trade mark infringement guide for related topics. Advice on a defence should also address whether any counterclaim or challenge to the registration is appropriate, rather than raising one simply to put pressure on the other party.

Trade mark litigation and how we can help

Some disputes require court proceedings. Others can be resolved before that stage. Our trademark lawyers can discuss both the legal position and the practical consequences of continuing a dispute.

People sometimes look for a trade mark attorney when a dispute escalates. Progressive Legal is a law firm, and our lawyers advise on and conduct trade mark litigation. If the dispute also raises questions about the register, ask how that part of the work will be handled.

The work may include an initial assessment, correspondence, negotiation, preparation of court documents and advice on evidence and hearings. The engagement should identify which stage is being undertaken and how later work will be scoped.

Define the outcome before choosing the process

Be clear about what matters to the business. You may need disputed use to stop, a timetable for changing stock or packaging, compensation, or certainty about future conduct. Those objectives help frame the advice and any settlement discussions.

They also help assess proportionality. The expected benefit of a proceeding needs to be considered alongside cost, management time, disruption and the possibility that the other party will contest your rights.

Address urgent issues promptly

If conduct is causing immediate harm or a launch is imminent, tell us at the outset. Urgent court relief may be relevant in some cases, but it has specific requirements and risks. It is not an automatic consequence of owning a registration.

Provide the timeline, the evidence of the conduct and any steps already taken. That allows the urgency and available options to be assessed properly.

Prepare the case and the evidence

A court dispute requires the claim and response to be set out through the appropriate documents. Evidence needs to support the facts relied on. Relevant material can include registration records, examples of use, agreements, correspondence and financial information.

Keep original records and follow advice about preservation and disclosure. Documents that are inconvenient to your position may still be relevant to the proceeding.

Review settlement opportunities

Negotiation can remain worthwhile after proceedings begin. Terms need to address the actual dispute and the steps required to carry out the agreement. A settlement should make the parties’ obligations clear, including what happens to any ongoing proceeding.

What outcomes can a court order?

Depending on the claim and the findings, remedies may include orders stopping infringing conduct and financial relief. Damages and an account of profits are different forms of relief; their availability and calculation require legal assessment.

A common question is: how much can you sue for trademark infringement? There is no fixed figure. Any financial award depends on the evidence of loss or profits, the relief sought and what the court considers appropriate.

Costs are also a consideration. Winning does not necessarily mean recovering everything spent, and an unsuccessful party may face a costs order. IP Australia’s court action guidance outlines the process and possible outcomes.

No result should be promised in advance. A decision depends on the law, evidence and circumstances of the case.

Reducing the risk of a future dispute

Review a proposed brand before substantial investment, keep records of ownership and use, and check that licences or permissions cover the activities contemplated. A comprehensive search can assist with a proposed application, while trade mark monitoring can help identify relevant later applications within its agreed scope.

If your business changes its name, logo, products or market, revisit the protection rather than assuming an old registration covers the new position.

Common questions