Many businesses in Australia have registered trademarks, and rightly so. A trademark is a vital tool to protect a business’ intellectual property.
A trademark is a sign used, or intended to be used, to distinguish goods or services of one person from those of another. A trademark can be a word, a phrase, a letter, a number, a logo, a picture, a combination of those things, or other things including a shape or a sound.
A function of trademarks is to indicate the origin of goods to which the mark is applied (ie. the goods are from a particular business).
The Trade Marks Act 1995 (Cth) operates to protect trademarks that are registered through IP Australia. Section 120(1) of the Trade Marks Act provides that:
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
In CocaCola Co v All-Fect Distributors Ltd  FCA 1721 at  the Court ruled:
Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.
The question of whether the use of a trade mark is likely to deceive or cause confusion is one “of impression and common sense” (Murray Goulburn Co-op Co Ltd v New South Wales Dairy Corp (1990) 171 CLR 363).
Consumers may be left wondering about whether a particular product is from one company which has a registered trademark, or another company that is using that trademark (or a deceptively similar trademark). If a consumer is confused, that will be enough to sue for breach of trademark.
Plaintiffs in cases such as these should consider other causes of action that may be available to them, such as “passing off” which is a tort, and “misleading or deceptive conduct” under sections 18 of the Australian Consumer Law, Schedule 2 to the Competition and Consumer Act 2010 (Cth).
The next step for an applicant or a plaintiff in a breach of trademark case, is to establish its losses to convince a Court that it is entitled to significant damages.
In addition to damages, a plaintiff should consider what other relief may be available to them against the defendant or a potential defendant. In some cases, an application for an injunction will be appropriate.
An injunction is an Order from a Court, such as the Federal Court of Australia, or the Supreme Court of Queensland, restraining the defendant from doing something – like using the plaintiff’s trademark.
Please contact us if you are concerned about your intellectual property being infringed. It may be cheaper than you think to enforce your intellectual property rights and the damage of not taking steps to protect your business can be significant.
See the website www.ipaustraia.gov.au about registering a trademark.
Proper experience in dealing with intellectual property business disputes is essential. Aitken Whyte Lawyers are focused on results. Our commercial law team will advise you on the proper course to take if your intellectual property rights have been infringed on, or if a claim for breach of trademark has been brought against you or your business.
Aitken Whyte Lawyers Sunshine Coast can assist you with all business and commercial law matters.
Aitken Whyte Lawyers
11/8 Pikki Street,
Maroochydore Qld 4558
Ph: +617 5408 0655
Fax: +617 3211 9311