Protecting your trade mark is crucial to the success of your business. After striving to build a strong reputation and safeguard your intellectual property, the last thing you want is to have an infringer benefiting from the value in your brand. This article outlines the basics of trade mark infringement, and what to do if your brand has been infringed.
What is a trade mark?
Trade marks protect your intellectual property rights in an identifying aspect of your business. This may include a logo, colour, sound, scent, picture or phrase. Businesses must register their trade marks to gain exclusive rights to use, sell and licence whatever they have marked.
How do I protect my trade mark?
Commonly, businesses fall into the trap of simply registering their trade mark and expecting full protection of their intellectual property rights. In reality, trade marks require constant supervision to help prevent infringements in the competitive marketplace. In addition to registration, businesses can protect their trade mark by:
- Engaging a trade mark watching service to constantly supervise your trade mark;
- Adopting a clear infringement strategy for your business which sets out how to deal with any potential breaches of your intellectual property rights
- Seeking advice from a legal professional about how to safeguard your brand.
What is trade mark infringement?
Trade mark infringement occurs when someone uses a trade mark that is substantially identical or similar to yours. This may occur because:
- Both trade mark names sound similar e.g. Bluefish and Boofish;
- Both trade marks cover similar goods and services e.g. both Bluefish and Boofish are trade marks of businesses which sell seafood; and
- Consumers are likely to be confused about the businesses and their reputations due to similar trade marks.
Early detection of trade mark infringements or misuses is crucial for timely enforcement of your intellectual property rights. Businesses who do not have trade mark watching services or other infringement processes in place may struggle to realise that any brand infringement is even present. In these cases, businesses must regularly conduct trade mark searches themselves to see if other traders are using similar marks.
Detecting brand infringements early can also help prevent trade mark dilution, which occurs where others use a similar mark as yours to the extent where your trade mark is no longer unique or valuable to your business.
What should I do when my trade mark has been infringed?
1. File a notice of intention to oppose registration
If the infringing trade mark is still in the process of registration, you can file a notice of intention to oppose registration of the trade mark with IP Australia. This must be made within two months of advertisement of acceptance of the infringing mark in the Australian Official Journal of Trade Marks.
Any notice of intention to oppose must be accompanied by:
- The relevant fee (at the date of this publication, filing a notice of intention to oppose registration with IP Australia costs $250); and
- A statement of grounds for opposition and the facts supporting these grounds. This statement is free to lodge, but must be filed within one month of filing the intention to oppose.
2. Send a letter of demand
If the infringing trade mark has already been registered, you may wish to send a letter of demand to the infringing business. Importantly, sending a letter of demand may not be the best option depending on the circumstances, and businesses should seek professional advice before taking any further action.
However, an effective letter of demand should:
- Identify your trade mark ownership and entitlement to make demands;
- Identify any infringing conduct of the business;
- Specify the relevant legislation breached e.g. Trade Marks Act 1995;
- Allow a specified period to stop infringement; and
- State that legal proceedings will be commenced if the demands are not complied with.
3. Seek legal advice
In the case of a suspected trade mark infringement, the most important thing to do is seek legal advice. Intellectual property law is complicated, and businesses may accrue hefty damages for unfounded claims of trade mark infringements. Engaging professional advice can help you understand your intellectual property rights, and commence legal proceedings if this is the right option for your circumstances.
- Trade marks protect your intellectual property rights in an identifying aspect of your business
- Trade mark infringement occurs when someone uses a trade mark that is substantially identical or similar to yours
- Early detection of brand infringements is crucial for the success of your business and prevention of trade mark dilutionBusinesses may wish to send an intention to oppose if the infringing mark has not yet been registered
- Businesses should seek professional legal advice before commencing any legal proceedings or taking further steps against potential trade mark infringements.