——— IP LITIGATION AND DISPUTES · Brisbane
Trade mark infringement Brisbane
Defending or enforcing your businesses brand is critical for its ongoing success. Dundas Lawyers® has experience initiating and defending trademark infringement proceedings in both the Federal Court of Australia and the Supreme Court of Queensland.
$200K+
Minimum dispute
value we advise on
6 – 24mo
Typical litigation
timeframe
📞
Direct Line – Brisbane
In short
Trade mark infringement may occur when a person uses a sign, name, logo, word, phrase or brand identifier that is substantially identical with, or deceptively similar to, a registered trade mark, in relation to the same or closely related goods or services.
These disputes often involve copied business names, confusingly similar logos, unauthorised brand use, competitor advertising, counterfeit goods, domain names, social media accounts or online marketplace listings.
——— Practical tips
Practical tips if your trade mark is being infringed
Businesses can protect their trade mark and respond effectively to potential infringement by taking the following practical steps.
01
Act promptly
Act quickly if another business is using your brand, name, logo or similar branding.
02
Gather evidence
Keep screenshots, invoices, website records, advertisements, social media posts and marketplace listings.
03
Verify registration
Check whether your trade mark is registered and what goods or services it covers.
04
Assess confusion
Consider whether the other party’s use is likely to confuse customers.
05
Avoid public threats
Do not send threats or public accusations before getting advice.
06
Get legal advice
Get legal advice before issuing a cease and desist letter or commencing proceedings.
On this page
- Quick summary of trade mark infringement matters
- What is trade mark infringement?
- Who can bring a trade mark infringement claim?
- Relief and remedies for trade mark infringement
- What conduct may amount to trade mark infringement?
- Examples of trade mark infringement
- Key takeaways about trade mark infringement matters
- Our approach to trade mark infringement matters
- FAQs
——— Trade mark infringement · Brisbane
Quick summary of trade mark infringement
A trade mark infringement claim may arise where a person uses a sign as a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark, in relation to goods or services covered by the registration. In Australia, registered trade marks are protected under the Trade Marks Act 1995 (Cth). IP Australia explains that a registered trade mark gives its owner exclusive rights to use the trade mark in Australia and the ability to stop others from using it without permission.
——— What constitutes a trade mark infringement?
What is a trade mark infringement?
Trade mark infringement occurs where a person uses a sign as a trade mark in a way that infringes the rights of the owner of a registered trade mark. In plain English, trade mark infringement means another person or business is using a brand, name, logo, slogan or other sign that is too close to your registered trade mark in a way that may confuse customers or take advantage of your brand. The key issues often include:
01
Whether the trade mark is registered.
02
Whether the alleged infringer is using the sign “as a trade mark”.
03
Whether the sign is substantially identical with, or deceptively similar to, the registered trade mark.
04
Whether the goods or services are the same, similar, closely related or of the same description.
05
Whether consumers are likely to be confused.
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Whether any defence applies.
——— Are you eligible to initiate proceedings?
Who can commence proceedings for trade mark infringement?
Trade mark infringement proceedings are usually brought by the registered owner of the trade mark.
In some circumstances, an authorised user of a registered trade mark may also have rights to take action, depending on the nature of the authorisation and the circumstances of the infringement.
——— What are the reliefs and remedies available?
Relief and remedies for trade mark infringement?
If trade mark infringement is established, the Court may make orders to stop the infringement and compensate the trade mark owner. Possible remedies include:
- Injunctions – restraining the infringer from continuing to use the infringing sign.
- Damages – compensation for loss suffered because of the infringement.
- Account of profits – requiring the infringer to account for profits made from the infringement.
- Additional damages – in appropriate cases, additional damages may be available for serious or flagrant infringement.
- Delivery up or destruction – requiring infringing goods, packaging, signage or marketing material to be delivered up or destroyed.
- Corrective advertising – requiring steps to correct confusion in the marketplace.
- Removal of online material – requiring removal of infringing websites, listings, advertisements or social media content.
- Domain name or account transfer – where appropriate, seeking transfer or restraint of confusing online identifiers.
- Costs orders – requiring the unsuccessful party to pay some (or all) of the legal costs of the successful party.
——— What are the common examples giving rise to trade mark infringement?
Conduct giving rise to trade mark infringement
Conduct that may amount to trade mark infringement includes conduct that uses another party’s registered trade mark, or a deceptively similar sign, in a commercial way that promotes the sale of goods or services.
Common examples include:
- Similar business name — a competitor adopts a name that is too close to an existing registered trade mark.
- Copycat branding — a business uses a logo, colour scheme, name or slogan that appears designed to imitate another brand.
- Counterfeit goods — a person sells goods bearing another business’s registered trade mark without authority.
- Online marketplace listings — a seller uses another business’s trade mark in product listings, headings, tags or advertisements in a way that suggests an association.
- Domain name misuse — a domain name is registered or used in a way that trades off a registered brand.
- Social media impersonation — an account name, handle or profile branding creates the impression of being connected with the trade mark owner.
- Unauthorised product labelling — goods or packaging display another business’s trade mark without permission.
- Misleading advertising — advertisements use another trade mark in a way that suggests sponsorship, approval, affiliation or endorsement.
- Importation of infringing goods — goods bearing infringing marks are imported or offered for sale in Australia.
Speak with Dundas Lawyers before the issue escalates
Our lawyers can advise you on trade mark infringement, brand protection, cease and desist letters, urgent injunctions, online infringement, counterfeit goods, trade mark ownership, passing off, misleading or deceptive conduct and possible Court proceedings.
or email us at info@dundaslawyers.com.au
Examples and case law about trade mark infringement
Trade mark infringement disputes often overlap with other areas of law. Depending on the facts, it may also be necessary to consider:
- Passing off – where a business misrepresents an association with another business and causes damage to goodwill.
- Misleading or deceptive conduct – where branding, advertising or marketing creates a misleading impression in trade or commerce.
- Copyright infringement – where logos, artwork, photographs, website content or packaging designs have been copied.
- Design rights – where the visual appearance of a product has been copied.
- Domain name disputes – where a domain name has been registered or used in bad faith.
- Australian Consumer Law claims – where consumers may be misled about the origin, sponsorship or approval of goods or services.
- Contractual disputes – where a licence, franchise agreement, distribution agreement or sale agreement governs use of the mark
——— Key takeaways
Key takeaways about trade mark infringement
What is trade mark infringement
Trade mark infringement may occur where another person or business uses a sign that is substantially identical with, or deceptively similar to, a registered trade mark.(Cth).
Common examples of infringement
Common examples include copying a business name, logo, product name, packaging, domain name, social media handle or advertising material.
Commercial impact of infringement
Trade mark infringement can cause serious commercial harm, including customer confusion, loss of goodwill, damage to reputation and loss of sales.
Consider urgent action
Urgent advice may be needed where infringing goods are being sold, a competitor is launching under a similar brand, or online material is causing immediate damage.
Available remedies
Possible remedies include injunctions, damages, an account of profits, delivery up or destruction of infringing goods, removal of online material and, in serious cases, additional damages.
Our approach to trade mark infringement matters
Dundas Lawyers’ approach to trade mark infringement matters combines commercial litigation experience with a practical understanding of intellectual property, brand protection and online business risk. We help clients identify the infringing conduct, preserve evidence, assess the strength of the registered trade mark, consider commercial leverage and choose the most effective remedy.
We use our Uncommon Nous to pursue practical outcomes through negotiation, cease and desist correspondence, takedown requests, urgent injunctions, settlement arrangements or formal proceedings.
——— Frequently asked questions
Trade mark infringement: common questions
01
What is trade mark infringement?
Trade mark infringement occurs when a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, a registered trade mark in relation to goods or services covered by the registration or related goods or services.
02
What are common examples of trade mark infringement?
Examples include using a similar business name, copying a logo, selling counterfeit goods, using a confusingly similar domain name, imitating packaging or using another business’s trade mark in online advertising without permission.
03
Can trade mark infringement happen online?
Yes. Trade mark infringement can occur through websites, online stores, search advertising, marketplace listings, social media pages, domain names and digital advertising where a registered trade mark or deceptively similar sign is used without authority.
04
What remedies are available for trade mark infringement?
The Court may order injunctions, damages, an account of profits, additional damages, delivery up or destruction of infringing goods, removal of online material and other orders depending on the circumstances.
05
What should I do if I receive a trade mark infringement letter?
Do not ignore it. You should get legal advice before responding, removing material, making admissions or agreeing to undertakings. The letter may raise serious legal and commercial issues, but it may also overstate the sender’s rights.
06
What should I do if someone is copying my brand?
Preserve evidence immediately. Take screenshots, keep copies of advertisements, record URLs, save invoices or marketplace listings and identify when the conduct started. You should then obtain advice about whether trade mark infringement, passing off, misleading or deceptive conduct or another claim is available.
Trade mark infringement enquiry
Legislation for trade mark infringement
The main legislation relevant to trade mark infringement claims is the Trade Marks Act 1995 (Cth). Relevant provisions include:
- s 120 — infringement of registered trade marks;
- s 121 — infringement by breach of certain restrictions;
- s 122 — circumstances where trade mark infringement may not be established;
- s 126 — relief that may be granted for trade mark infringement, including injunctions, damages or an account of profits;
Depending on the facts, the Australian Consumer Law, copyright law, domain name rules, passing off principles, corporate law, contract law or confidential information obligations may also be relevant.
Recent insights about trade mark infringement
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What amounts to use of a trade mark outside of Australia?
The case of Lamont v Malishus & Ors (No 4) [2019] FCCA 3206 (Lamont v Malishus) involved an action for infringement of a registered trade mark in Australia under the Trade Marks Act 1995 (Cth) (TMA). This case raised several issues, including, whether using a word as part of a domain name constituted “use” as…
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Clash of jurisdictions and trade mark infringement
The case of International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Limited [2011] FCA 339 (Case) considered whether use of Australian registered trade marks on a British website constituted “use in Australia” under section 120 of the Trade Marks Act 1995 (Cth) (TMA). It was ultimately held that, despite use of the two…
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Use of a competitors trade marks for comparative advertising
Comparative advertising can be a powerful tool, but it must be done within the bounds of the law. Learn more about the legal implications of comparative advertising in Australia, including the case of GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser (Australia) Pty Limited (No 2) [2018] FCA 1.
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Trade mark infringement – the good faith defence
Navigating trade mark law can be difficult. This article explains the good faith defence and what circumstances must be fulfilled for it to be available, as well as relevant case law and further info.
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Opposing a trade mark on grounds of bad faith
Court found respondent infringed copyright of Dee Snider’s works, awarding AUD $1.5 million for flagrant, contumelious infringements. Not fair or satirical.
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Case study – intellectual property protection structures
Protect your valuable intellectual property and secure revenue for product development. Learn how Dundas Lawyers can help you create an intellectual property protection structure with potential benefits for your business.
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Calculating account of profits – trade mark infringement
This article examines the calculation of damages when an account of profits is awarded as a remedy for trade mark infringement. It covers the general principle, the proportionality rule, and the deduction of overhead costs.
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Unjustified trade mark infringement threats
Comprehensive list of Australian Court decisions and related legislation covering corporate, technology, intellectual property, commercial, employment, negligence, confidentiality, copyright, moral rights, user generated content, click wrap/browse wrap, trademarks, torts and social media law.
Recent Federal Court decisions regarding trade mark infringement
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The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203
TRADE MARKS – appeal – where primary judge found that the respondent had not infringed the second appellant’s registered trade marks – whether primary judge erred in finding that the word mark THE NORTH AGENCY used by the respondent was not deceptively similar to the second appellant’s registered trade mark – no error established –…
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Vitaco Health IP Pty Ltd v AFI Cosmetic Pty Ltd [2023] FCA 1463
PRACTICE AND PROCEDURE – application for interlocutory injunction – ex parte application – strong prima facie case of trade mark and copyright infringement, and breach of s 18 and s 29 of the Australian Consumer Law – First Respondent’s two websites use the applicants’ logos and other branded content, and falsely indicate the First Respondent…
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Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258
TRADE MARKS – infringement – whether the respondents have infringed the applicant’s registered trade marks comprising the word ORO TRADE MARKS – infringement – defences to infringement – whether the respondents can establish the defences under ss 122(1)(b)(i), 122(1)(e), 122(1)(f) and (fa), and 124 of the Trade Marks Act 1995 (Cth) TRADE MARKS – validity…
