Have you infringed on a trademark?

You would not believe how easy it can be to spend time, money, and effort in developing a business name, logo, branding and identity, only to discover there is a near-identical brand already out there that’s been registered. Using a sign or business name that’s almost identical to another registered trademark is known as a trademark infringement and can be a costly experience.

What is a trademark?

A trademark is a sign, symbol, or word that is used to distinguish goods or services from other competitors on the market. This is a business’ identity. A trademark should always be registered with IP Australia, a government organisation responsible for administering all IP rights and legislation relating to patents, trademarks, designs.

This registration is one of the most critical steps in protecting your trademark and identity, ensuring your competitors don’t. A registered trademark gives the registered owner the exclusive rights to:

• Use the trademark; and
• The ability to authorise the use of the trademark by others (such as licensing the trademark to be used by a separate company).

Understanding trademark infringement

From time to time, a trademark can be infringed by a business who has used a deceptively similar brand, logo or identify to position their business. In many cases, this can indicate some sort of connection between the two unrelated brands to the public, not only causing confusion, but impacting the registered owner’s business.

But trademark infringements don’t have to be a confusion between two highly competitive brands targeting the same market.

Infringements of trademark can occur when:

1. A trademark is ‘substantially identical to’ the registered trademark for goods/services with the same description or closely related;
2. A trademark is ‘deceptively similar to’ a registered trademark for goods/services with the same description or closely related; or
3. A trademark is well known in Australia and is for a category of goods/services even though its description is unrelated to the registered trademarks.

Determining whether two trademarks are ‘substantially identical’ is done by simply comparing the two trademarks side-by-side and noting their essential features, similarities and differences.

The test for whether two trademarks is ‘deceptively similar’ is slightly more complex. A Court will usually:

• Compare the look and sound of the trademarks;
• Compare the respective meanings of the trademarks;
• Contrast each mark to determine if either hold a degree of familiarity or reputation from the viewer’s perception of them;
• Identify if there are any instances of actual confusion; and
• Discount the descriptive matter between trademarks if there are common characteristics well recognised in the particular trade.

Defences to trademark infringement

There are some possible defences of trademark infringement that can be used in Court, including:

• Use of a person’s name in good faith (such as the owner’s name or the name of their place of business, or the name of a predecessor or a predecessor’s place of business).
• Use for the purpose of comparative advertising (however, individuals and businesses risk falling foul if their comparison is misleading)
• Use in good faith to describe the good or service (such as to describe the type, quality, quantity, intended purpose, value, or geographical origin, or indicate the time of production of goods or provision of services); or
• Use in good faith to indicate purpose, such as describing goods as accessories, spare parts or services (such as where it is intended to be used in relation to the goods or services of a registered trade mark owner, so long as it does not deceive customers)

Tips to avoid trademark infringement:

There is no doubt you will want to avoid trademark infringement when setting up your business and identity. Before you invest too much time and money into designing your brand consider the following tips:

• Conduct a search of registered and pending trademarks through the IP Australia website.
• Conduct a search on the Australian business name register or ASIC company name register.
• Conduct a Google search and see if your trademark produces any results;
• Look at trademarks of your major competitors or business’ in your area;
• If in doubt, seek advice from a trademark expert.

More information

In most cases, trademark infringements can be completely avoided with more effective trademark research prior to using a similar logo. While this can certainly be a time-intensive task to do, it could save you a costly mistake in Court and re-branding your business later down the track, not to mention compensations.

If you believe your trademark is being infringed, it’s important you get in touch with an experienced lawyer or trademark attorney for more advice. They will be able to assist you to issue a letter to the infringing business, or alternatively, commence legal proceedings.

Our team are highly experienced in laws relating to IP rights and legislation relating to patents, trademarks and designs. Get in touch today.