What are the different types of trade mark disputes?
A trade mark infringement dispute can arise in two ways:
1. A competitor is using an identical or similar trade mark to yours.
2. A competitor considers you are using a trade mark identical or similar to theirs.
When has trade mark infringement occurred?
Trade mark infringement of a registered mark has occurred if a competitor or other trader uses a sign that is substantially identical or deceptively similar to your registered mark. The infringer must have used the mark on goods or services that fall within or are similar to the classes of goods or services in which your trade mark is registered. You do not have to establish reputation to enforce your rights when your trade mark is registered.
In addition to your rights under the Trade Marks Act 1995, there are also potential actions in misleading and deceptive conduct under the Australian Consumer Law (formerly Trade Practices Act) and under the common law (passing off). Our trade mark lawyers can advise you on this.
What if my trade mark is not registered?
If your trade mark is unregistered, the only courses of action available are enforcing your rights on the basis of misleading and deceptive conduct and passing off. Evidence of reputation in your trade mark is often required for these actions, which is not the case with an infringement of a registered trade mark under the Trade Marks Act 1995. Establishing this type of reputational evidence will increase the cost and time it takes to make out your infringement claim.
Is using a trade mark in a domain name infringing trade mark rights?
In certain circumstances trade mark infringement can also occur on the internet, where a domain name is registered that is identical to or confusingly similar to your trade mark. Also, if the infringer has registered the domain name in ‘bad faith’ (for example, to trick consumers into believing the website is affiliated with the trade mark owner or to benefit from diverted website traffic) then action can be taken to transfer the domain name to the trade mark holder under the Uniform Dispute Resolution Policy (UDRP). An adaption of the UDRP, the .au Dispute Resolution Policy, exists in Australia to resolve disputes concerning .au domain names.
See our Domain Name Disputes page for more information.
How can I avoid a trade mark dispute from the outset?
Conducting a comprehensive trade mark search will enable you to avoid infringing on any existing registered trade marks or brand rights. You can then register your trade marks to ensure that they are officially protected from infringement and to deter competitors from using your mark.
What are my options for resolving a trade mark dispute?
There are two options for resolving an infringement of your trade mark, or a claim of infringement against you by another party.
- Trade Mark Infringement Dispute Resolution
While an aggressive trade mark litigation strategy might be the best approach in certain circumstances, often the preferable commercial outcome (particularly when defending a trade mark infringement claim) is to use alternative dispute resolution (ADR) methods such as negotiation or mediation to facilitate communication between the parties to reach a settlement to the dispute. If you are the trade mark rights holder we will prepare an appropriately worded warning notice or letter of demand to be sent on your behalf. If you have on the other hand received a letter of demand, we will provide you with clear advice on where you stand and develop an appropriate response to be sent on your behalf. In both instances, these initial correspondences will then open the lines of communications between the parties (or their lawyers) which creates an opportunity to explore whether a settlement commercially favourable to you can be achieved in the early stages of the dispute. In the majority of cases, trade mark infringement disputes will settle without the need for legal proceedings being commenced. Our trade mark lawyers have a strong track record of achieving commercially relevant and favourable results for our clients.
- Trade Mark Infringement Litigation
While we always put in place strategies to explore settlement opportunities, sometimes the adoption of an aggressive trade mark litigation strategy is unavoidable and/or a necessary commercial strategy. At the start of any litigation we provide you with a clear roadmap showing you how a matter might unfold, with the timeframes and costs associated with each of those stages. We keep you informed of progress and fixed fees for every stage of the litigation process with what we call a Fixed Fee Litigation Structure. Also with our fixed fee project based approach it means you can take the matter in stages and retain certainty, control and transparency on your legal spend.
Our trade mark lawyers have litigated in various jurisdictions including the Federal Court of Australia and Federal Circuit Court of Australia and bring a wealth of intellectual property experience to devise the strategy best tailored to your needs and those of your business. We also work with a close network of overseas trade mark lawyers in all key jurisdictions meaning we can assist you with any international trade mark dispute issues in an efficient way with a clear focus on achieving the right outcome.
HOW CAN ACTUATE IP ASSIST?
It is vital that you obtain accurate, specialist advice on how best to deal with trade mark disputes and trade mark infringement claims for your particular circumstances. Actuate IP will work with you to manage the trade mark dispute resolution process and if necessary the litigation process. As a starting point we will invest time at the outset to understand the nature of your dispute and how it relates to your business and what your business wants to achieve from the dispute – whether you are enforcing your rights or defending claims of infringement made by another business against you. With this understanding we will provide you with a detailed and considered Fixed Fee Proposal that provides you with initial recommendations and fixed fee options on how to approach the dispute in a way that will achieve the right outcome for you. You can then decide whether our firm will be the right fit for your business.