FB pixel

Trade Mark Infringement

A trade mark is a word, symbol, phrase, colour, logo or slogan that distinguishes one trader's goods or services from those of other traders. 

Trade mark registration provides a legal basis to a business, for it to enforce its trade mark rights against others in civil actions for Trade Mark Litigation proceedings. Trade mark infringement comes in many forms.  It might be a competitor who adopts an identical mark for identical goods or services.

Alternatively, the infringement may be more subtle where the competitor has adopted a deceptively similar mark for similar goods or services which dilutes the trade mark over time.

Trade mark infringement can also occur due to the natural expansion of businesses that have previously co-existed without issue.

It is important for businesses to register their trade marks so that any infringement of the brand can be enforced and injunctions obtained to cease the infringement. 

If your trade mark is being infringed, it is important to move quickly against the infringement.

What is Trade Mark Infringement?

Trade mark infringement is usually described as an unsanctioned use of a registered trade mark. It usually involves the transaction of goods or services under another's brand name, or a deceptively similar name.

If you think that your trade mark has been infringed, you must take action immediately to reduce the harm being caused by the infringement. The protection and enforcement of your intellectual property rights must be a part of your legal strategy.

There are three types of trade mark infringement that can occur under Australian Trade Mark law.

Identical goods/services

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 defence does not apply.

Goods/Services not identical but of the same description

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 of the goods in respect of which the trade mark is registered (registered goods); 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 they establish that using the sign as the person did is not likely to deceive or cause confusion.

Famous Marks

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 likely 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.


Trade Mark Infringement Lawyers

EAGLEGATE Lawyers is a leading, multi-award-winning, Australian firm offering legal advice on trade mark infringement. With over a decade of experience, our team of lawyers are well-versed in all aspects of trade mark law - be it trade mark litigation, infringement, monitoring, design registration, licensing, etc.

We are dedicated to protecting trade mark owners’ intellectual property rights and handling complex infringement issues. Whether you are a small business or a big organization, we can help.

Get in touch with us if you think your trade mark has been infringed or require a legal opinion on infringement.

Contact us by phone or email. We will get back to you as soon as possible.


IP LAWYERS Australia

Rights Notification Letters

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.

Cease and desist letters

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.

Trademark Litigation

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.


Protecting your intellectual property should be a cornerstone of your business strategy -- be it your trade mark, patent or product design. EAGLEGATE’s team adopts an integrated approach, addressing the enforcement of IP rights as a crucial business strategy. In case of a trade mark infringement, we help clients with dispute resolution and ensure an equitable outcome. We are entrusted by many commercial clients all over Australia to provide quality intellectual property services.

Need some legal advice on IP-related matters? Get in touch with us today.

Call us or leave a message to book a free 30 minute consulation. 


Badges

As seen in: