You’ve done the right thing. You’ve spent the money and time getting your precious trade mark registered. And it’s a good thing you did, because some **insert expletive** is using it without your permission…
Here are the steps you can take to enforce your trade mark rights:
1. Establish that there is an infringement
Before you get ahead of yourself, it’s critical to establish that there actually has been an infringement. Under the Trademarks Act 1995 (Cth), an infringement occurs when a person uses (as a trade mark) a sign that is substantially identical, or deceptively similar to, a registered trade mark:
- in relation to goods or services for which the mark is registered; or
- in relation to goods or services that are similar to those for which the mark is registered; or
- in relation to unrelated goods or services where the trade mark is “well known” in Australia, so that the mark’s use in relation to unrelated goods or services would likely indicate a false connection with the owner of the well-known mark.
This would be a good time to chat to a lawyer well-versed in trade mark law. They’ll be able to help you establish whether you have a legitimate claim, and, if necessary, with steps 3 – 6.
2. Make informal contact
Now that you’ve established the infringement, draft a polite and informal email or letter to the infringer yourself.
The purpose of this communication is to bring the infringement to the infringer’s attention (it’s possible that they don’t even realise they’re infringing your trade mark!), raise your concerns and ask them to propose a way forward.
Best case scenario, they apologise profusely, change their infringing mark/sign/words and your trade mark infringement problem has been resolved with minimal cost to you.
3. Cease and desist letter
If you don’t receive a response to your informal communication or the response you receive is unsatisfactory, it’s time to turn up the heat. A ‘cease and desist’ letter written by a lawyer should do just that. It usually includes:
- Information identifying you as the rightful owner of your registered trade mark
- All the details of the other side’s infringing conduct, with examples if available
- References to the relevant parts of the legislation prohibiting the infringing conduct
- A demand that the other side cease and desist the infringing conduct within a specified period of time, that they return all infringing property to you and provide you will the information required to enable you to calculate a claim for compensation
- A statement that if your demands are not met you will initiate legal proceedings against them without further notice
This letter can potentially resolve the issue, or at least open the dialogue between you and the other side to negotiate a resolution yourselves or attend alternative dispute resolution (more on that in 5). If it doesn’t end in your desired result, it’s time to take more formal action.
4. For Chinese Infringers - Filing a complaint with the Administration for Industry and Commerce (AIC)
If the infringer isn’t based in China, move straight to step 5.
If the infringer is based in China and you have a clear-cut case, then before filing a law suit you can file a complaint with the local State Administration for Industry and Commerce (AIC). The AIC may choose to carry out an investigation which you may be requested to participate in. This option is generally considered faster and less costly than court proceedings.
The AIC can order immediate cessation of any illegal activities and confiscate or destroy all infringing products, labels, brochures and equipment specifically used for manufacturing infringing products if it finds there has been an infringement.
It can also impose a monetary fine on the infringers, but it cannot order the infringer to pay compensation to you.
5. Alternative Dispute Resolution
Alternative Dispute Resolution (ADR) is a collective term for out-of-court dispute resolution options like mediation and arbitration. ADR may be court-directed (i.e. you started litigation but the court directed you and the other side to attempt mediation before the court was prepared to hear the matter), or it may be voluntary.
These processes are often quicker and cheaper than going to court and therefore may be more efficient for both parties.
Mediation is a process where a neutral third party, called a mediator, helps parties negotiate a mutually acceptable agreement.
Arbitration is a procedure in which a dispute is submitted, by agreement of the parties, to one or more arbitrators who make a binding decision on the dispute. In choosing arbitration, the parties opt for a private dispute resolution procedure instead of going to court.
If the infringer is an international party, the Arbitration and Mediation Centre of the World Intellectual Property Organisation is available to assist you resolve the dispute.
If both you and the infringing party are in Australia, there are many local ADR organisations to choose from, and if you can’t agree on an arbitrator or mediator, you can agree that an impartial third party appoint the ADR expert for you.
6. Legal proceedings
Your last resort is litigation.
You’ll need to start litigation within 6 years from when the first act of infringement arose (unless you’re in the Northern Territory, in which case it’s 3 years).
Penalties for trade mark infringement:
The civil remedies available for trademark infringement include:
- interlocutory and final injunctions which require the infringer to cease and desist the infringements;
- damages or account of profits which provide you with compensation for your losses and/or their gains as a result of the infringement; and
- orders for delivery up (handing over) of the infringing goods.
Additional (punitive) damages may also be awarded depending on the facts of the case. And, if the infringer has imported goods into Australia which infringe your registered trade mark, other penalties may apply.
Trade mark infringement FAQs
If I choose not to do anything about the infringement at this point in time, will it harm me or make things more difficult at a later date?
We recommend against delaying any action until a later date as you stand to suffer loss of goodwill and brand reputation through repeated infringement. If you choose to pursue the infringement later, it may not be enough to restore your brand to where it would have been if you had “nipped it in the bud”. Another risk is that if you were to take action later, the infringing party could raise a defence that you unreasonably delayed taking action to pursue the infringement.
If I issue a cease and desist letter now and they decide to fight it or ignore it, will my position be harmed if I choose not to progress with further legal action?
If you issue a cease and desist now and you choose not to progress after they fight or ignore it, there are 2 potential downsides:
- The infringer may have time to hide or destroy the infringing material, which would prejudice your case should you decide to pick it up again at a later stage; and/or
- The infringer may institute what is known as an ‘anti-suit’ against you. This is a request by the infringer for the court to issue a declaration of non-infringement (i.e. declaring that the other side have not and are not infringing your trade mark). If they do this, you will need to incur the legal costs to defend yourself, despite not wanting to progress the case following the cease and desist letter.
To protect against the latter risk, we recommend wording the cease and desist letter carefully with the aim of opening up a dialogue and not threatening immediate commencement of proceedings. Though this may take some of the “oomph” out of the letter, it’s better to word it that way to avoid an anti-suit if you’re thinking you might not proceed to formal legal action.
What are their counter strategies likely to be to a cease and desist letter?
As above, the major risk we can identify (from a legal perspective) is filing an anti-suit against you. That’s why before sending the cease and desist letter, we’ll be sure to satisfy ourselves that you have a clear case of trademark infringement in accordance with legislation.