Trademark Infringement Australia

A trademark infringement lawyer or attorney can help you in several ways if someone or another business has used your trademark without your permission. Here are some of the ways a trademark infringement lawyer can assist you:

• Providing initial advice about next steps and the process of escalation: It is best to “measure twice and cut once”. A trade mark infringement lawyer specialises in these types of matters and obtaining their advice first before taking action against a trade mark infringing party is always a smart move. The danger is that if you start to engage with the opponent without that advice first, it is possible to compromise your legal interests. You are also far more likely to obtain the desired result if correspondence comes from a law firm on law firm letterhead. Unfortunately, some people don’t listen otherwise.
• Legal Representation: A trademark infringement lawyer can represent you in Court if ultimately that is what needs to happen to make them stop the trademark infringement.
  Investigation: A trademark infringement lawyer can investigate the infringing party’s use of your trademark to determine the extent of the infringement and help you determine the appropriate legal action to take. Remember, they are specialists in this area and deal with these types of matters on a daily basis. They know some really neat tricks and software to use.
• Drafting Legal Documents: A trademark infringement lawyer can draft legal documents, such as cease and desist letters or settlement agreements, to help protect your trademark rights. A strongly and well-worded cease and desist letter or a letter of demand from a lawyer will normally yield the best possible result to have the infringing material taken down straight away. Those letters can be very confronting when they are received and often makes the party scared into complying with the demands immediately especially when there is a threat of litigation.
• Trademark Registration: Our team of trademark lawyers provide expert legal advice on trade mark registration, costs, objections, oppositions & submissions. Sometimes having these in place will stop an infringement from happening altogether, however having a registered trade mark is highly preferred before any infringement happens as you can rely on the Trade Marks Act, not just on the Australian Consumer Law for misleading and deceptive conduct.
• Trademark Enforcement: A trademark infringement lawyer can help you enforce your trademark rights by monitoring for potential infringement and taking legal action when necessary. We have a trade mark watching service that we can keep an eye on your trademarks to see if anyone is out there in the market and may be infringing.

Overall, a specialist trademark lawyer can help you navigate the complex legal landscape of trademark law and protect your valuable intellectual property.

Get your brand protected! For expert legal advice, please get in touch with us today via phone or the contact form on this page.

Section 120 of the Trade Marks Act 1995 (Cth) outlines the circumstances under which a person infringes a registered trademark by:

• Using a sign which is substantially identical or deceptively similar to a registered mark in relation to:
  • Goods and services for which the trade mark is registered for
  • Goods and services that are of the same description or closely related to the goods and services the trade mark is registered for
• Using a “well-known” mark for unrelated goods and services to those of which the trade mark is registered for (trade mark dilution).

Please note: names have been changed in the following trademark infringement case study.

The scenario of trademark infringement

Michael has a famous surname. He’s a public speaker, author and inspirational coach. He shares his surname with an international corporation. Although he didn’t realise it, some of the activities he was conducting were actually infringing the same activities of this corporation.

When Michael filed his trademark application, very soon after he received a letter from the largest law firm in the world! Acting on behalf of the international corporation, they were suspicious of his use of the name. And they were obviously very keen to make sure he didn’t misuse it, or infringe on their existing copyright protections.

Luckily Michael came to us as soon as he received the opposition to his trademark application. We were able to negotiate with the international corporation regarding the trade mark.

This case had a good outcome in what could have been an extremely costly and lengthy process of opposition and appeal against Michael’s trade mark application.

The moral of the story…

Always file your trade mark applications as soon as possible.

The headstart process is extremely helpful in identifying whether there are likely to be any oppositions to an application either by another party or by IP Australia. It’s no guarantee, as a business may oppose your application, but it’s a great start.

Get sound advice (or use professional small business lawyers such as the team at Progressive Legal) to ensure that all proper processes and all due diligence has been followed.

If you have filed the application yourself and receive any opposing correspondence, don’t delay – seek legal advice immediately – as time is of the essence.

Contact us today if you require any assistance with a dispute resolution matter. We are highly professional and skilled trade mark infringement lawyers that proudly serve clients Australia wide.

Winning a trademark infringement litigation can be complex and depends on various factors such as the strength of your evidence, the extent of the alleged infringement, and the effectiveness of your legal strategy.

Here are some general steps you can take to increase your chances of success:

Conduct a thorough investigation: Gather as much evidence as possible to support your case. This may include documentation of your prior use of the trademark in question, sales figures, and customer feedback.

Hire a competent trade mark infringement lawyer: Work with an experienced intellectual property attorney who has a proven track record of success in trademark litigation. They can help you build a strong case, navigate legal complexities, and increase your chances of success.

Understand the strengths and weaknesses of your case: It’s important to have a clear understanding of the merits of your case and any weaknesses or potential obstacles you may face. This will help you develop a strategy that leverages your strengths and addresses potential weaknesses.

Develop a strong legal strategy: Develop a clear and effective legal strategy that is tailored to the specifics of your case. This may involve seeking a temporary restraining order, filing a counterclaim, or pursuing alternative dispute resolution options.

Be proactive: Take proactive measures to protect your rights and demonstrate that you are taking the allegations seriously. This may include discontinuing any infringing use of the trademark and initiating legal action if necessary.

Be patient and persistent: Trademark infringement litigation can be a lengthy process, so it’s important to remain patient and persistent in pursuing your case. Work closely with your lawyer, and be prepared to adapt your strategy as needed based on new developments in the case.

In Australia, trademark infringement laws are governed by the Trade Marks Act 1995 (Cth) and the common law.

Here are some key provisions of the law:

1. Use of an identical or deceptively similar trademark: It is an infringement of a registered trademark to use an identical or deceptively similar trademark in relation to goods or services that are identical or similar to those covered by the registered trademark. This includes use of the trademark as a business or domain name, as a badge of origin.
2. Use of a trademark that is likely to deceive or cause confusion: It is also an infringement to use a trademark that is likely to deceive or cause confusion in the minds of consumers as to the origin or quality of goods or services.
3. Parallel imports: Importing and selling parallel goods (goods bearing a genuine trademark that were produced for a market outside Australia) may infringe on the trademark owner’s rights if the goods are not intended for sale in Australia.
4. Counterfeiting: The deliberate and unauthorised use of a trademark that is identical to a registered trademark in relation to goods or services that are identical or similar to those covered by the registered trademark is considered counterfeiting and may amount to a criminal offence.
5. Remedies: Trademark owners who have been infringed upon may seek remedies including an injunction to stop further infringement, damages, account of profits, or delivery up or destruction of infringing goods.

The penalties for trademark infringement in Australia vary depending on the specific circumstances of the case.

Here are some possible penalties:

• Injunction: A court may issue an injunction to stop the infringing use of the trademark if that order is sought by a party.
• Damages: The trademark owner may seek damages to compensate for any losses suffered as a result of the infringement.
• Account of profits: The trademark owner may also seek an account of profits, which requires the infringing party to pay over any profits made as a result of the infringement.
• Criminal penalties: In cases of deliberate and intentional counterfeiting, criminal penalties may apply, including fines and even imprisonment.
• Court orders for disposal of infringing goods: The Court may also make orders for the disposal of infringing goods, such as destruction or delivery up to the trademark owner.

It’s important to note that the penalties for trademark infringement will vary depending on the severity of the infringement and the damages suffered by the trademark owner. In addition, the Courts may take into account any mitigating factors, such as the infringing party’s level of knowledge or intent, in determining the appropriate penalty.

Copyright infringement occurs when someone or a business violates the exclusive rights of a copyright owner without their permission. These exclusive rights include the right to reproduce, distribute, and display the copyrighted work publicly.

Copyright protection covers literary, artistic, musical, and other creative works.

Examples of copyright infringement include copying and distributing a copyrighted movie, publishing a book without the author’s permission, or using copyrighted music in a commercial without obtaining the necessary licences.

Trade mark infringement, on the other hand, occurs when someone uses a registered trademark without the owner’s permission in connection with goods or services that are identical or similar to those covered by the trademark registration.

Trademark protection covers brand names, logos, slogans, and other elements that are used to identify a specific product or service – as a badge of origin.

Examples of trademark infringement include selling counterfeit goods that bear a registered trademark, using a company’s logo without their permission, or registering a domain name that is identical or similar to a registered trademark or another business’ name or trademark.

Some of the damages for trademark infringement can be the following:

1. Actual damages: The trademark owner may seek actual damages, which is the amount of money that they lost as a result of the infringement. This may include lost profits, damages to the brand’s reputation, or other financial losses.
2. Statutory damages: In some cases, the trademark owner may be entitled to statutory damages, which are set by law and may be awarded even if the trademark owner cannot prove actual damages. The amount of statutory damages can vary depending on the circumstances of the case.
3. Injunctions: A court may issue an injunction to stop the infringing use of the trademark.
4. Account of profits: The trademark owner may also seek an account of profits, which requires the infringing party to pay over any profits made as a result of the infringement.
5. Legal fees and costs: In most cases, the trademark owner should be entitled to recover the majority of their legal fees and costs incurred in bringing the infringement action, if they are successful. In this regard, costs usually follow the event. i.e. if you win. If you lose, then the opposite normally applies.

Damages that can be obtained for trademark infringement can vary depending on the specific circumstances of the case and the laws of the jurisdiction where the infringement occurred.

In addition, the damages that are awarded may depend on the strength of the evidence presented and the effectiveness of the legal strategy employed by the trademark owner.

Flagrancy of the conduct can also be taken into account. Expert evidence can be provided to assist the Court in determining what amount of damages can be appropriate in the specific case.

A Google Ads trademark infringement refers to the unauthorised use of a registered trademark in Google Ads campaigns without the owner’s permission.

This occurs when a business uses someone else’s trademarked brand name or logo in their ad text or keywords to drive traffic to their own website or promote their products/services. Such actions can mislead consumers, dilute the trademark owner’s brand value, and create unfair competition.

Google has policies in place to address trademark infringement in its advertising platform and provides mechanisms for trademark owners to file complaints and request the removal of infringing ads.

If you find someone engaging in a Google trademark infringement, or someone using your business name in a Google Ads campaign, please get in touch with us today via phone or the contact form on this page.

Business name infringement refers to the unauthorised use of a registered or established business name by another company or individual. It occurs when a business uses a name that is identical or confusingly similar to an existing business’s name, creating a likelihood of confusion among consumers.

This infringement can occur within the same industry or across different sectors. Business name infringement can lead to customer confusion, loss of market share, damage to the reputation of the original business, and potential legal consequences.

If you find someone infringing your business name, please get in touch with us today via phone or the contact form on this page.