Is Your Brand Clear to Use?

Conducting a trade mark search

A trade mark search offers insight into the competitive brand space and can be helpful to conduct either at the time of deciding on a trademark or before filing a trade mark application. If your trade mark application is defined incorrectly, it may be rejected or if accepted, offer you inadequate protection. This could result in missed business opportunities and wasted money. A trade mark application should be carefully prepared before filing. A trade mark search can be used to identify and resolve potential issues in your trade mark application before you apply for registration. Based on the results of the search, you may wish to reconsider the trade mark or even the entire brand to be able to obtain trade mark registration.

A trade mark search can reveal:

• pending or registered trade marks that are identical or similar to the trade mark being applied for;

• whether the text or logo in your trade mark application is already being used;

• whether the text or logo in your trade mark application is eligible for protection; or

• possible trade mark infringement by the applicant if the trade mark is currently being used in commerce.

When can you initiate action against trade mark infringement?

Subject to any agreement between the owner of a registered trade mark and an authorised user of the trade mark, the authorised user may bring an action for infringement of the trade mark:

1. at any time, with the consent of the registered owner; or

2. during the prescribed period, if the registered owner refuses to bring such an action on a particular occasion during the prescribed period; or

3. after the end of the prescribed period, if the registered owner has failed to bring such an action during the prescribed period.

If the authorised user brings an action for infringement of the trade mark, the authorised user must make the registered owner of the trade mark a defendant in the action. However, the registered owner is not liable for costs if he or she does not take part in the proceedings.

Trade Marks Act

The Trade Marks Act provides protection for registered trade marks. Establishing registration is straightforward because a registered trade mark will be entered into the Register of Trade Marks.

While it is often more difficult to prove and more costly, some protection is accorded to unregistered trade marks. The tort of passing off and consumer protection legislation provide avenues for business owners to protect their trade marks from unauthorised use.

Passing off

In the Common Law tort of passing off, a party makes unauthorised use of a get-up, namely, the overall packaging, external appearance, or feel of a product, to profit from another product's established reputation. Registration of a trade mark is not necessary in passing off cases. The elements of passing off are more difficult to establish and generally require:

1. establishment of a reputation or goodwill,

2. there has been a misrepresentation that good/services of one trader are connected with the goods/services of another trader, and

3. there has been damage to (the Plaintiff's) goodwill.

Passing off and trade mark infringement cases frequently overlap but are addressed using different approaches. Compared with infringement, passing off is not covered in any statutory sanction, and is instead ruled based on precedent cases tried in the pertinent courts.

A successful passing off claim can result in an injunction with the possibility of the court also awarding damages in certain cases.

Misleading and Deceptive Conduct

In addition to the above defences, Section 124 of the Act states that infringement is not established when your unregistered trade mark relating to goods and services in question has been used continuously before the filing date (priority date) of the infringed trade mark or the first time that the infringing party or their predecessor started using their unregistered trade mark, whichever is earlier.

It is common to see cases where there is an overlap of passing-off and misleading and deceptive conduct. Since the actions can be related and often also overlap with claims of trade mark infringement, it will be always advisable to have a IP specialist lawyer analyse your situation.

Prior use

In addition to the above defences, Section 124 of the Act states that infringement is not established when your unregistered trade mark relating to goods and services in question has been used continuously before the filing date (priority date) of the infringed trade mark or the first time that the infringing party or their predecessor started using their unregistered trade mark, whichever is earlier.

Pre-commencement of infringement

Court proceedings can be quite costly and therefore, settling disputes outside of court is usually preferable. Once aware of instances of unauthorized use of a registered Trade Mark, it is usual practice for the trade mark attorney to send a "letter of demand" to the infringing party. The letter of demand can be prepared in a number of ways depending on the objective of the Trade Mark owner. This is a pre-condition to commencing litigation in the Federal Court.

Mediation and arbitration may be employed so that both parties can come to a mutual agreement before the issue is escalated to litigation.

Trade mark registration will protect your brand and by association, any reputation that you build in your brand name. It has a value that grows with the growth of your business. If you are considering trade mark protection or enforcing your trade mark rights against a potential infringer, please do contact us.