A trade mark is a sign (mark) used to distinguish goods or services in the course of trade from one person to another. This could be a word, colour, logo image, etc.
If a person (Infringer) uses as a trade mark a sign that is substantially identical with, or deceptively similar to an already registered mark, this could amount to trade mark infringement under the Trade Marks Act 1995 (Cth).
Generally, in order for an infringement to occur, the alleged Infringer must cause deception or confusion in the use of the sign.
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Remedies Available to Owners of Infringed Marks
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The civil remedies available for trademark infringement typically include:
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interlocutory and final injunctions;
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damages or account of profits; and
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orders for delivery up of the infringing goods.
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Additional (punitive) damages may be awarded in cases where the defendant's conduct has been particularly flagrant or where there is seen to be a need for deterrence.
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Where legal action is commenced, it is typically heard in the Federal Court.
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Cease and Desist Notice/Letter of Demand
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Rather than go to the cost of instigating legal proceedings, a Cease and Desist Notice issued to the alleged infringer may be all that is required. A Cease and Desist Notice is often one of the first steps to be taken when seeking to protect your trade mark.
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It could:
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explain the trade mark owner’s rights
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identify any instances of infringement of those rights
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request that remedial action be taken
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state the possible consequences of non-compliance (eg. litigation).
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No Grounds for Trade Mark Infringement Action
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It is important to be aware of section 129(1) of the Trade Marks Act 1995 (Cth) (Act), which enables a person threatened with an action for trade mark infringement to seek a declaration from the Court that:
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the threats are “groundless”;
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the party making the threats be restrained from making them; and
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the threatened person (alleged infringer) be entitled to damages due the groundless nature of the threats.
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As a registered trade mark owner, where you suspect an infringement of your trade mark:
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first obtain appropriate legal advice;
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check what your rights are;
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carry out necessary due diligence regarding the alleged infringement;
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do not make onerous or groundless demands against the alleged infringer.
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If you are concerned someone has infringed your trade mark, contact Greyson Legal | Trade Mark Lawyers for further assistance.