14 May Trade Mark Infringement
Registered Trade Marks
A registered trade mark provides the owner with exclusive rights, including to use, license and sell the mark. It is also a marketing tool, as the significance of the owner’s mark can increase with the achievements of their business.
Trade Mark Infringement
Trade mark infringement is very serious. Under section 120(1) of the Trade Marks Act 1995 (Cth) (TM Act):
“A person infringes a registered trade mark if the person 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.”
Section 126(1) of the TM Act provides the relief a court may grant in an action for an infringement of a registered trade mark, which include:
“(a) an injunction, which may be granted subject to any condition that the court thinks fit; and
(b) at the option of the plaintiff but subject to section 127, damages or an account of profits.”
While there are causes of action to enforce rights for unregistered trade marks, such as the tort of passing off, it can be difficult to establish and enforce these causes of action for unregistered marks, compared to those where a mark is registered.
In addition to mark infringement under section 120(1) of the TM Act, another business’ unauthorised use of a mark may accompany conduct and representations that relate to provisions of the Australian Consumer Law (ACL), schedule 2 of the Competition and Consumer Act 2010 (Cth). For example, section 18(1) of the ACL provides:
“A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”
It is onus of the owner of intellectual property to monitor its use by third parties and to enforce their rights.
If you are alleged to have breached intellectual property of another person or entity, an appropriate response is often necessary. Claims can escalate quickly.
Allegations are often made with demands. Demands often include the demand to give an undertaking to stop using the trademark and to refrain from future use.
A considered approach to a demand is important. Failing to act can lead to a trade mark owner asking a court to intervene. Injunctions can be requested and ordered. In some cases, urgent injunctions can be ordered.
If your intellectual property has been copied or used by another party, you can seek action. Advice should be sought in order to be aware of your rights, options available and costs involved.
GENERAL AND CONTACT INFORMATION
The article, the content and references made are intended to keep an audience updated with information. It is not intended that the article or part of it should be relied upon as advice. Information provided may not apply to in all circumstances or in particular situations. If you do want particular advice or you have any questions, we welcome you to contact us on (02) 9189 5905 or at [email protected]