How to Take Action Against Someone who’s Infringed Your Trademark
If your trademark has been infringed it is vital to enforce your IP rights. Learn what action you need to take against trademark infringers.
If you’re in a situation where your brand’s logo has developed a killer reputation it is essential to know the procedure to follow in order to protect your trademark. Trademarks carry with them the reputation and good will of your business and as a result can be highly valuable. If you have established a solid reputation in your field, your competitors will likely go to lengths to borrow this goodwill in order to attain a slice of the commercial pie. Following these steps will help you protect your trademark from unauthorised use by competitors.
Step 1 – Check whether your trademark has been infringed
If you think your trademark has been infringed by a competitor you firstly need to check the Trade Marks Searchable Journal and search for the the trademark that you believe has infringed your mark. It is prudent practice to regularly search the official trademarks journal in order to check whether or not other traders are using your mark. In most cases trademark infringement rests on whether someone has registered a trademark that is:
- is substantially identical or similar to your trademark; and
- is likely to deceive or confuse consumers due to the reputation that your mark has established
- For example; you run a telco company with the registered trademark Crazy Micks and another company registers a mark called Crazy Ricks
If you find that there is a substantially identical mark on the Trade Marks Searchable Journal you then need to file a Notice of Intention to oppose.
Step 2 – Notice of Intention to Oppose
A Notice of Intention can be found on IP Australia’s website at Notice of Intention to Oppose. A notice of intention is a procedural requirement that needs to be filed within two months after the contested trademark was registered. All the information you need to include on the notice is the number of the trademark you’re opposing, the person or company whose name the trademark was filed under and where applicable the ACN number of the trademark you’re opposing. To file a notice of infringement you can need to create account with IP Australia and use the eServices function. Note that a notice of intention to oppose costs $250 to file so consider whether the mark you’re opposing has infringed you mark.
Step 3 – Statement of Grounds and Particulars
After you’ve filed the notice of intention to oppose you must file a statement of grounds and particulars. This statement must be filed within one month of the Notice of Intention. In The statement of grounds and particulars you need to outline how your trademark has been infringed by your competitor. If you believe your trademark has been infringed you will likely provide grounds for opposition under the following fields:
- Substantially identical / deceptively similar trademarks;
- Opponent has earlier use of the same / similar trademark; and
- The trademark likely to deceive or cause confusion.
Seek Legal Advice to Protect Your Trademark
Knowing the ins and outs of the Trade Marks Act is not an easy task. For this reason it is important if not essential to seek legal advice from an IP attorney to ensure your statement of grounds is drafted correctly. When seeking a qualified trademark attorney consult LawPath’s quick quote portal. Seeking legal advice will put you well on the path to enforcing your IP rights and protecting the reputation and goodwill of your brand.
Unsure where to start? Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our largest online network of expert lawyers or any other legal needs.
Matthew is paralegal at Lawpath and is completing his final year of a bachelor of Laws combined with Political Science at Macquarie University. With a keen interest in IP law, Matthew helps startups understand the ins and outs of trademark registration, protection and enforcement.