U nder the Trade Marks Act 1995 (Cth), trade mark infringement occurs when a person uses (as a trade mark) a “sign” that is substantially identical with, or deceptively similar to, a registered trade mark:
- in relation to the 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 so “well known” in Australia that its use in relation to unrelated goods or services would likely indicate a false connection with the owner of the “well known” mark.
An action for trade mark infringement has many elements similar to an action for passing off and for a breach of the Trade Practices Act 1974 (Cth) and so often these causes of action will be alleged at the same time as trade mark infringement.
An unregistered trade mark, also known as a common law trade mark, may also be infringed, however in much narrower circumstance. In cases involving common law trade marks it is necessary to prove that there exists an established reputation in the infringed mark, that another party is using that mark in such a way as to misrepresent that the goods/services are associated with the mark, and finally, that thei misrepresentation is causing damage.
It is not the responsibility of IP Australia to enforce your trade mark rights. You, or your appointed trade mark agent, should actively monitor whether or not another party is using your mark without your consent, and if so, you should take immediate action.
McIntoshIP can provide you with advice with your trade mark dispute or trade mark infringement matter. Once we understand your case we will be happy to provide you with a written quote.