What are the different types of trademark disputes?A trademark dispute can arise in two ways:
- a competitor is using an identical or similar trade mark to yours
- a competitor considers you are using a trade mark identical or similar to theirs.
How can I be sure a trademark infringement has occurred?Trademark 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 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.
Can trade mark infringement occur with internet domain names?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?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.
How should I resolve 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 dispute resolution
While an aggressive trade mark litigation strategy might be the best approach in some 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, mediation or conciliation to facilitate communication between the parties to reach a settlement to the dispute. ADR can be court-ordered or privately organised.
In all trade mark infringement disputes, we consider whether ADR is a viable option that will minimise costs and legal liability by avoiding a potential lawsuit. Trade mark disputes and litigation can sometimes be an unwanted distraction from your day-to-day business.
Trade mark litigation
While we always facilitate settlement where appropriate, sometimes the adoption of an aggressive trade mark litigation strategy is unavoidable or a necessary commercial strategy. At the start of any litigation we provide you with a clear roadmap showing how a matter might unfold, with the timeframes and costs associated with each of those stages. We keep you informed of progress and costs at every stage of the litigation process.
Our trade mark lawyers have litigated in various jurisdictions including the Federal Court and bring a wealth of intellectual property experience to devise the strategy best tailored to your needs and those of your business.
Actuate IP’s customised strategy will:
- protect your market share
- protect your market reputation
- avoid consumer brand confusion
- enhance the value of your trade mark and business.
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 litigation and dispute process. You will be aware at all times of progress and costings, enabling you to make the most appropriate decision for your business at every stage of your matter.
Contact Actuate IP to discuss the best strategy for protecting your trade marks.