A logo can be a valuable marketing tool to help businesses to stand out from the competition. If your logo establishes a particular image, quality or reputation within the public, competitors may try to associate their goods or services with your business in order to reap the benefits. In this article, we’ll provide you with steps that will help you protect your logo from unauthorised use.
1. Determine your rights
To commence legal action against an infringer you must first prove that your intellectual property (IP) rights exist. This requires registering your logo as a trademark. A registered trademark provides you with the exclusive right to use, license and sell the mark. A person won’t be able to pursue an infringement case if they don’t have any IP rights. You can read more about how to register a trademark here.
As well as registering your logo, it is important to prove that your rights are still in force. Registration lasts for ten years from its filing date. This can be renewed twelve months before the renewal is due or up to six months after. The trademark owner is responsible for paying the renewal fees in order to avoid other people using the mark once the IP rights have expired. It is also essential to keep in mind that you must be actively using your trademark. An application for non-use can be made by anyone if your trademark has not been used in the past three years.
2. Proving infringement
Once registered, the trademark owner is responsible for enforcing their IP rights. This includes monitoring the marketplace for potential infringement. In order to establish trademark infringement, the infringing mark must be substantially identical or deceptively similar and is being used on identical or similar goods and/or services for which your trademark is registered. The Trade Marks Act 1995 (Cth) also provides protection for ‘well-known’ trademarks. Section 120(3) offers protection against the use of a trademark where the infringing trademark indicates a connection to the well-known mark which may adversely affect the interests of the registered owner.
Unregistered trademarks may also be protected through the common law action for passing off or for misleading and deceptive conduct under the Australian Consumer Law. By relying on these actions, a business can prevent another business from deceptively misappropriating the reputation that is associated with the unregistered trademark.
3. Enforcement options
It is best to contact a trademark lawyer prior to taking legal action. This ensures that you understand the scope of your rights and the options available in order to protect your logo. An unfounded claim of IP infringement can result in liability for damages.
Letter of demand
The first step in an infringement case usually involves the trademark owner sending a letter of demand. IP Australia outlines that an effective letter of demand will include:
- Your ownership of your rights and entitlements
- An outline of the infringing conduct
- Specific provisions in the relevant statute (in this case, the Trade Marks Act 1995) that has been infringed
- A specified time period for the infringer to stop infringing and return all infringing property
- Information to calculate a claim for compensation
- A warning that legal proceedings will commence if demands are not met.
Alternative Dispute Resolutions
Alternative Dispute Resolution (ADR) refers to the processes that assist parties to resolve their matters without the need for litigation. This includes mediation, arbitration and expert determination. ADR provides flexibility, which may drastically reduce both time and costs for both parties. You can read more about ADR here.
Court action
You may wish to initiate infringement proceedings in the court system if ADR is unsuccessful. During this process, the other party can also challenge the validity of your IP rights. The owner of the IP may be compensated by damages, account for profits or through a permanent injunction if the court action is successful.
Final thoughts
As discussed, a logo can be beneficial in running your business. Therefore, it is important stay on top of your legal rights and obligations such as paying your renewal fees and identifying infringement within the marketplace in order to protect your logo. There are a few options available if another business infringes your trademark. However, it is recommended that legal representation is sought before any action takes place.
