There are three types of trade mark infringement that can occur under Australian Trade Mark law.
The first type of infringement occurs where, a person infringes a registered trade mark if the person, without proper authority, uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered, and a defence does not apply.
A person can also infringe a registered trade mark where, the person, without proper authority and without a defence applying, uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
(b) services that are closely related to registered goods; or
(c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
(d) goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
The third type of infringement occurs in respect of famous marks.
A person infringes a registered trade mark if, without proper authority and without a defence applying:
(a) the trade mark is well known in Australia; and
(b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d) for that reason, the interests of the registered owner are likely to be adversely affected.
It is vital that upon trade mark infringement, you use experienced trade mark lawyers and move quickly to stop the bad acts. The faster you are able to send a rights notification letter or a cease and desist letter, the sooner you can stop the brand infringement. Putting others on notice of your rights might also increase any award for additional damages for flagrant infringement that you might receive for breach of your brand.
At EAGLEGATE our TM lawyers are registered trade marks attorneys and have been protecting trade marks and brands for over 10 years. They have run and won multiple brand infringement cases.
Rights notification letters put the other party on notice of your rights in your intellectual property rights. If they are properly drafted the letters can be relied upon later in respect of costs.
A trade mark rights notification letter should only put the other party on notice of your trade mark rights, and should not threaten court action.
You should always seek advice from a qualified professional before sending a rights notification letter to ensure you are not exposing your self to a claim of threats of groundless infringement.
If your trade mark rights are being infringed, call EAGLEGATE today.
The purpose of a well drafted trade mark Cease and Desist Letter is to demonstrate to the other party that if you were take the threatened legal action on the claims you outline, you would likely win the case and obtain a cease and desist order, and thus it should accept your demands.
The purpose is not to intimidate or scare the other party into submission but rather convince it of the strength of your case.
You should also only make demands that are reasonable in the circumstances. Care should be taken before sending a cease and desist letter as the Trade Marks Act contains provisions for threats of groundless threats.
If you think your TM rights are being infringed call EAGLEGATE today.
The purpose of a starting a trademark case (a trademark proceeding) is to have the infringer cease the use of the registered trademark or a deceptively similar or substantially identical trademark. It can take time to convince a the person to cease the TM infringement and some people will not cease actions unless ordered to do so by a Court. Unfortunately in those cases a trader may have no choice but to start an infringement case against the other party. It is generally trademark owners that take action but under the Trade Marks Act 1995 an authorised user may also take action. We can also help you assess trademark damages, compensatory damages and any likelihood of an additional damages award.
Our solicitors have experience winning brand infringement cases.
We also have considerable experience in trademark defence cases.
If you believe your IP rights are being infringed or you are accused of breach of brand rights, call EAGLEGATE today for a free initial consultation.
As expert trademark lawyers in Brisbane, EAGLEGATE understands the litigation process, trademark case law, trademark cases and trademark defences. We will guide you through the process of litigation, enforcing your rights or defending a claim of Trade Marks Act breaches and hold your hand, every step of the way.
Clients don’t buy our time, they buy our years of experience.
If you do not have a trade mark case, you may have a claim for misleading and deceptive conduct or passing off. These types of consumer claims often will go hand in hand with each other. Call EAGLEGATE today.
EAGLEGATE’s founding Partner, Nicole Murdoch, is an Engineer, a registered Trade Marks Attorney and has over 10 years of industry experience in the IT industry. She has practised IP law for over 10 years. She aims to settle cases on commercially sensible and economic terms without having to proceed to court. She has obtained and conducted Anton Piller Searches to preserve evidence and successfully obtained rulings for clients to protect their rights. EAGLEGATE can assist you to obtain an Injunction, Mareva Order, Freezing Order, or other Court Orders to protect your rights