Whether accidental or intentional, the consequences linked with trade mark infringement are incredibly serious. Hopefully, you never find yourself in the position of being prosecuted for trade mark infringement or need to pursue someone else for infringement.
However, should you find yourself in either of these situations, you’ll likely want to know the penalties involved and how to defend yourself.
In this guide, we’ll walk you through what you can expect as a consequence of trade mark infringement, how to pursue the application of these penalties should your IP be infringed and where to seek help.
What constitutes trade mark infringement?
It is actually quite easy to avoid trade mark infringement when you consider the parameters for what is viewed as infringement. You can count your trade mark as being improperly used or your behaviour as infringing if:
- The trade mark (image, logo or text) is deceptively similar or identical to one that is already registered.
- The trade mark is too similar to one already registered in a similar category of goods and services.
- A well-known trade mark is already registered in the same category, while trade marking Apple in a confectionary space may be approved, using it in Computer Hardware will not as Apple exists and it’s very well known.
Examples of trade mark infringement
For clarification, let’s consider the following examples.
1. Cola lollies vs Coca-Cola
If a confectionary company sells sweets labelled as ‘coca-cola’ flavoured, this could be considered infringing. Even if the Coca-Cola trade mark is only registered in a beverage category, the risk of customers being deceived regarding the origin of the product is too great.
2. Selling items printed with a known trade mark
Even if you do not manufacture the items in question, selling unauthorised goods printed with a known trade mark such as Nike, Under Armour, Louis Vuitton or similar is a clear-cut case of trade mark infringement.
3. Using a catchy slogan without consent
Have your own unique trade mark but also want to use a catchy slogan to market your brand? Slogans can also be trade marked. Using a seemingly innocent phrase such as ‘just do it!’ to entice customers to contact you or purchase your goods or service could also be seen as an infringement.
Why? ‘Just Do It’ is a trade marked phrase belonging to the Nike corporation.
4. Same same but different
Love a particular logo, such as the Starbucks image and think you can capitalise on their success by simply altering the colour, name and image slightly? It’s different, so it’s not an infringement, right? Wrong.
Even if any images or slogans are not identical and have slight variations in spelling or colour, they are still going to be considered deceptively similar. Ultimately, they may be judged as being not different enough and a penalty will be applied.
This is why it is so essential that companies and businesses always perform the proper checks on their intended branding before going public. There are several ways to check if your idea is unique or original and avoid the risk of being penalised for trade mark infringement.
While we often brush off copycat behaviour under the guise of imitation being the highest form of flattery, the reality is that when it comes to business, imitation can be damaging to your reputation and your bottom line.
Penalties for trade mark infringement
So what type of penalty for trade mark infringement can you expect? The penalties can range significantly depending on the type and seriousness of the offence.
Initially, a consequence may be something as simple as sending a letter of demand in which the offending party is requested to cease and desist the usage of the trade mark. If the action is not stopped, the penalties can get progressively worse.
The next step following a cease and desist request is to enter into mediation or alternative dispute resolution, if available. This can be more affordable than court action for both parties but relies on each side actively working towards a resolution. This can make it unfeasible for a business that is dealing with an unresponsive or unrepentant infringer.
Should your case proceed to court action, Australia’s Trade Marks Act 1995 and Copyright Act 1968 will be considered. These laws outline harsh penalties for trade mark infringement, including acts of counterfeiting and piracy – these are all considered to be serious criminal offences.
In addition to any civil action or mediation, the court can opt to impose penalties of up to five years imprisonment and fines of up to $181,500. This means these penalties could be in addition to paying compensation to the trade mark owner as well as covering all legal costs related to the case.
It would be easy to think that such harsh consequences of trade mark infringement should act as a major deterrent for infringers, however, cases of trade mark and Intellectual Property infringement continue to multiply.
This means that to protect your trade mark you need to be more vigilant and more persistent than ever.
Benefits of enforcing penalties
Of course, the most obvious benefit of pursuing trade mark infringement penalties in Australia is to protect your trade mark from misuse and as a result, protect your business.
It can take a lot of time and energy to consistently track down and confront infringers, however, enforcing the penalties and your rights consistently serves to benefit you in more ways than one.
Reputation
Actively quashing misuse and infringement of your trade mark protects your reputation. It stops dilution and confusion regarding your brand and what is genuine or deceptive. Stop potential negative perceptions of your brand due to unauthorised use and enforce your rights.
Prevention
If you are aware of infringing products entering Australia and have had no success resolving this directly with the infringer, you can also report them to Australian Customs. They will remain on alert for these items and seize them before they enter the market.
Deterrent
Ignoring infringing behaviour or taking a relaxed approach to enforcing your rights can lead to an increase in this type of behaviour.
Conversely, if you develop a reputation as a business or company that takes a firm stance against trade mark infringement, infringers will be less likely to use your trade mark themselves.
Remaining vigilant and continually pursuing penalties against the infringer is one of the best ways to protect your trade mark. Consistently failing to resolve these issues can lead to irreversible damage to your brand and a decrease in the value of your business.
Where to seek help
If you have been made aware of trade mark infringement utilising your registered trade mark or have been advised you have engaged in infringing behaviour, don’t panic.
At IP Guardian, we understand how stressful these discoveries can be and how overwhelming it can seem to navigate a resolution. With decades of experience as patent and trade mark attorneys, our team delivers expert advice and unmatched professional support.
We are highly skilled at securing optimal outcomes for our clients, regardless of whether we are defending your rights or negotiating an accusation of infringing behaviour, our trade mark infringement attorneys can help.
In addition to this, we also support our clients to create a system that protects their intellectual property rights. From performing proper trade mark checks before application to formal registration and how to monitor improper use, we can do it all.
No matter where you are in your journey as a trade marked business, our team can help you to secure your business and protect your reputation from illegal infringement. To learn more, contact our trusted attorneys today at 02 9071 0130.
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