Registering a trade mark with IP Australia gives the owner exclusive rights over that trade mark for the goods and services it is registered for under the Trade Mark Act 1995 (Cth) (‘the Act’).
According to the Act, a trade mark can be a letter, word, name, signature, number, device, label, shape, colour, sound or scent.1
When another person uses someone else’s trade mark without permission, this is considered trade mark infringement. It is more difficult to establish infringement of an unregistered trade mark, as legal action depends on common (case) law. However, if a trade mark is registered with IP Australia, the Act gives the court authority to award relief such as damages and other penalties.
B. IDENTIFYING TRADE MARK INFRINGEMENT
The following are components of trade mark infringement:
B.1. Substantially identical or deceptively similar
Trade mark infringement may occur when someone uses another trade mark which is substantially identical or deceptively similar to an existing registered trade mark concerning the same goods and services.2
To determine whether a trade mark is substantially identical to another, the two marks are considered side-by-side to analyse the essential features of each mark. If there is a total impression that there is a resemblance, it may be considered substantially identical.
The term deceptively similar refers to when one trade mark “so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”3
For example, Nestle was successful in obtaining damages from an online vitamin business called ‘A-sashi Vitamins’ as Nestle owned trade marks containing the word ‘MUSASHI’; and both trade marks related to performance vitamins and nutrition products. Therefore, the court ruled that the inclusion of ‘sashi’ in both trade marks was similar enough for consumers to be confused that the products were related.4
B.2. Goods or services are closely related
A sign infringes a registered trade mark if it is substantially identical or deceptively similar, and is in relation to goods or services of the same description; or goods or services that are closely related.5 This is not a necessary component for trade mark infringement to occur – but it gives greater evidence that there is a likelihood of deception or confusion with the registered trade mark.
Whether goods or services are closely related depends on a number of factors, including the nature and characteristics, the purpose, if they are regarded the same by those who provide them, and if they are provided by the same sources.6
B.3. Well known trade mark
Trade mark infringement may occur even if two marks are for different types of goods and services if the registered trade mark is well known in Australia, and therefore may indicate a connection between the marks.
C. PROVING INFRINGEMENT
To pursue legal action against someone who has infringed on your trade mark, an essential aspect would be to prove that your intellectual property rights exist in law.
The trade mark registration must be current, noting that registration must be renewed every few years. After expiry, the trade mark is generally free to use.
Additionally, only the owner of a trade mark can bring infringement proceedings. They must establish that they are the owner of the registered trade mark, or is someone entitled to act on the owner’s behalf.
Lastly, it must be proven that the registered trade mark was copied (which may require expert assistance) and that the infringer did not have permission to use it.
D. PENALTIES OF INFRINGEMENT
Section 126 of the Act allows several types of relief that a court may order, including:
- Injunction – this requires the party to cease using the mark that is infringing on another registered trade mark;
- Damages or account of profits; and
- Additional damages if the court considers it appropriate.
For more information on related matters, you may wish to read the following articles:
- Trade Mark Applications: This article discusses what a Trade Mark is and the ‘application and registration’ process.
- Civil Litigation: A brief guide to the procedures of going to court.
Comasters can advise you on whether your trade mark has been infringed and with defending trade mark infringement.
1 Trade Mark Act 1995 (Cth) ss 6, 17.
2 Ibid s 120(1).
3 Ibid s 10.
4 Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4)  FCCA 2025 .
5 Trade Mark Act 1995 (Cth) s 120(2).
6 Ibid s 120(3).
© Comasters February 2022