If you’ve made a worrying discovery regarding the misuse of your trade mark you’ll need to take steps to rectify the situation. Thankfully there are several options open to you to resolve the issue.
Covered under intellectual property law, trade marks, their ownership and use are protected. You are entitled to report trade mark infringement and seek resolution the same as you would for other intellectual property violations.
To help you better understand your rights and how to report trade mark infringement, we’ve prepared this easy-to-follow guide.
What Is Trademark Infringement?
Trademark infringement refers to any unauthorised use of a registered trade mark or service mark that is legally owned by another party.
Why Does It Matter?
Trademark infringement is an issue as it can cause confusion or misunderstandings for the consumer. This deception in turn leads to a loss of revenue for the trade mark holder and damages a brand’s reputation.
What Constitutes Infringement?
Before you take legal action regarding trade mark infringement you must establish two key things that prove infringing behaviour has occurred.
These criteria are outlined in Australia’s IP infringement guidelines:
You must be able to prove that the infringing trade mark is being used on identical or similar goods and/or services for which your trade mark is registered and that
the infringer’s sign or trade mark is sufficiently similar to your trade mark and as a result, could cause confusion for customers about the product’s origin.
Examples of infringing behaviour regarding a trade mark include using similar branding, colour schemes, wording or text styles to an existing brand. It may also involve selling a similar or identical product or service.
Reporting Infringing Behaviour
The methods for reporting trade mark infringement will differ slightly depending on the type of violation. It will also differ based on where the behaviour is occurring such as on social media.
Reporting Domain Name Trademark Infringement
To report domain name trade mark infringement you should first lodge a complaint with .au Domain Administration (auDA). Trademark IP disputes against .au domain names must be lodged as a formal complaint under the au. Dispute Resolution Policy (au.DRP) through one of two independent resolution providers approved by auDA – not directly with auDA itself. Fees start at $2,000 and disputes are decided by an independent panel.
The governance of the auDA only covers domains ending in .au and does not extend to top-level domains such as .com or .org. These are handled by other international governing bodies. To challenge issues outside of Australia, you will need to contact the relevant governing body for the country in which the offending domain is registered.
If none of these methods brings about a resolution, you can then proceed with a letter of demand or legal action. These are the same steps you would take for general trade mark violations, launching legal action acts as a method of reporting trade mark infringement in these instances.
Reporting Trademark Infringement – Facebook
If you are sure that someone is engaging in infringing behaviour utilising your trade mark on the Facebook platform, you can easily report it via this form. You must be certain that the behaviour constitutes infringement and be prepared to accept their determination or provide further evidence.
Repeated submissions of the form for the same issue can see your account terminated, so proceed with caution.
Reporting Trademark Infringement – Instagram
Similar to Facebook, Instagram offers a reporting facility for trade mark violations. This can be accessed here. Due to the legalities involved, they cannot act on any Instagram trade mark infringement reports needing a more in-depth review.
They suggest reaching out to the individual responsible for the infringement first before taking it further.
Reporting Trademark Infringement – eBay
To submit an eBay trade mark infringement report for infringing behaviour on their platform you must complete a Notice Of Claimed Infringement (NOCI) form by email. eBay will take action accordingly and remove the listing while also emailing the offending party with details of why this occurred. They also include the contact details of the trade mark owner so there can be no question as to the rightful owner of these rights.
Offering a Verified Rights Owner (VeRO) program, eBay is committed to supporting individuals to protect their trade marked goods. Participation in this program, which is free to join, makes it easier for eBay to facilitate the identification, searching, reporting and removal of infringing items. It is highly recommended all sellers join this program.
Reporting Trademark Infringement – Google
As with the former platforms, Google also makes for easy reporting of trade mark violations via a Trademark Complaint Form. Before doing this it is recommended that you review their Trademarks Policy regarding what they will and won’t investigate.
They also request that you verify your eligibility to submit a complaint in advance this includes:
Having an email address domain that matches a corporate domain or website OR a PDF of a signed company letterhead confirming your ownership of the trade mark.
Having attorneys of record listed on your trade mark registration documentation.
Failure to verify these elements may see your report rejected.
Next Steps
Not getting anywhere with the provided reporting tools? You do have more serious avenues available for resolving your concerns.
A letter of demand requesting the offender to cease and desist from engaging in the infringing behaviour would be your next step. This is often quite effective, particularly if prepared by a lawyer specialising in patent and trade mark law.
These letters usually outline what will happen if they do not adhere to your request such as pursuing legal avenues for a resolution.
Not getting anywhere with the provided reporting tools? You do have more serious avenues available for resolving your concerns.
Letter Of Demand
Typically the first step in resolving infringement, a letter of demand is a legal document that requests the offender to cease and desist from engaging in the infringing behaviour immediately. The letter aims to enforce IP rights while offering the recipient an opportunity to address the issue before the case escalates to court, helping both parties potentially avoid lengthy litigation.
Outlining the trade mark rights being violated, this letter also specifies the nature of the infringing activities and sets out the actions required to resolve the matter. This may include requests not only to stop using the mark but also to destroy infringing materials or compensate for damages.
Only recognised by a court when legally compliant, it is best to have a letter of demand drafted and sent by a qualified trade mark attorney.
Alternative Dispute Resolution
Alternative Dispute Resolution (ADR) involves the use of mediation, arbitration or expert determination to decide on an outcome for reported violations. It is usually faster and less expensive to pursue this avenue over court action.
The reported infringement will be assessed in a single process that accounts for your IP rights across multiple jurisdictions. For international disputes, you can report and pursue a resolution via the WIPO Center which offers a range of ADR services.
Court Action
The beginnings of legal action against an infringer act as a reporting method. Often a lengthy process, the court may order an interim injunction against the infringers to stop their behaviour until an outcome can be determined.
Court action is very serious in nature and it is essential that you are properly prepared to defend your rights to the trade mark in question. To achieve this, you should contact experienced and qualified patent and trade mark infringement attorneys to represent you.
You should also be aware that any court-ordered outcomes are usually binding and not open for appeal. This is why you should exhaust all other avenues for reporting and resolution before taking this final step.
How To Protect Yourself Against Infringement
If all this sounds exhausting, you’re right! The process of reporting and dealing with infringing behaviour can be incredibly frustrating and difficult. To avoid these challenges or mediate their frequency you should take steps to protect yourself and your trade mark against infringement.
One of the easiest deterrents you can employ is to utilise the ® symbol in conjunction with your trade mark. This is a very visible sign that you have taken the proper steps to register your trade mark and therefore hold exclusive rights and ownership over it.
When selecting your trade mark, it is also advisable to choose something unique. Generic words, symbols or phrases can frequently be used by others who have no intention to infringe, defending your rights for generic trade marks can be significantly harder also.
Be Alert
Proactive actions are the best way to find potentially infringing behaviour and stamp it out. Periodically you should perform your own searches and checks online for similar products, names, symbols or similar.
Follow The Rules
Still within the 10-year standard registration for your trade mark and think you’re wholly protected? Think again. After five years on the register, a third party can request the removal of your ownership over the trade mark if they feel you have not been using it for its intended purpose.
You will then need to reapply for your trade mark or potentially battle someone else for ownership.
To learn more about how to protect yourself, you may like to read our associated article here.
Need Professional Help?
If you’re struggling with infringing behaviour and unable to resolve it, or simply do not have the time to handle it yourself, the better choice is to engage professional assistance. At IP Guardian, our highly skilled and experienced patent and trade mark attorneys have successfully navigated these scenarios for years.
We handle the reporting and resolution of trade mark infringement with ease while also helping you prepare infringement strategies to avoid future issues. Our involvement can often see instances of infringement rapidly resolved without the need for expensive court action or mediation.
Our team undertakes all the necessary checks to ensure you have adequate reason to report an individual. We also deal with preparing all the necessary ownership proofs that are required when you report a person for trade mark infringement. This makes for a seamless and unequivocal reporting and resolution process.
Should you need support to reapply for registration of your trade mark or guidance on any other aspect of intellectual property, we can assist with that too. Speak with the experts at IP Guardian today to learn more on 02 9071 0130.
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