Trade Marks
A trade mark is a sign used in business to indicate that goods or services come from a particular trader or service provider. A trade mark can be a letter, name, signature, word, numeric device, brand, heading, label, aspect of packaging or shape, and even a scent or sound. It can consist of words alone or images alone or a combination of words and images. For more general information about trade marks please see the Arts Law Trade Marks information sheet.
Two types of trade marks exist:
- Registered trade marks- These have been registered under the Trade Marks Act 1995 (Cth). They are usually designated by ®.
- Common law trade marks- These types of marks have not been registered under the Trade Marks Act. However, their unauthorised use by another trader may constitute passing off or misleading or deceptive conduct. The common law mark must have been used in relation to certain goods or services to such an extent that it has built up a reputation or goodwill for the owner. An action to protect a common law trade mark will often seek to protect the innocent trader’s reputation or goodwill. They are often designated by ™.
The owner of a registered trade mark has exclusive rights under the Trade Marks Act.
These are the exclusive rights to use the trade mark and to authorise other persons to use the trade mark in relation to the goods and or services in respect of which the trade mark is registered. The Act provides that the owner has the right to obtain relief if the trade mark owner’s rights have been infringed.
What constitutes infringement?
Infringement of a registered trade mark
The Trade Marks Act provides that an infringement of a registered trade mark is when a person uses as a trade mark, a sign that is substantially identical with, or deceptively similar to, another trade mark in the following three circumstances:
- in relation to the goods or services for which the trade mark is registered;
- in relation to goods or services which are similar or closely related to goods and services for which the trade mark is registered;
- in relation to unrelated goods or services where the trade mark is so “well known” in Australia that its use in relation to unrelated goods or services would be likely to indicate a connection with the owner of the registered mark with the consequence that the interests of the registered owner of the “well known” trade mark could be negatively affected.
In most cases (unless you have not used your registered mark), infringement of a registered trade mark is also likely to amount to passing off and a breach of the Trade Practices Act. These are discussed in more detail below in the section on common law marks.
Infringement of a common law trade mark
An infringement of a common law trade mark is similar to infringement of a registered trade mark; however the trade mark owner cannot rely on the Trade Marks Act. To challenge the unauthorised use of a common law trade mark, an action for ‘passing off’ or misleading and deceptive conduct in breach of the Trade Practices Act 1974 (Cth) is necessary. The basic principle of passing off is that no person is allowed to represent that his or her goods or services are those of another. To bring an action for passing off you generally will have to gather evidence to show:
- you have established a reputation in your trade mark;
- a misrepresentation as been made, i.e. by using your trade mark or a deceptively similar mark, the infringer has wrongly represented that his or her goods or services are yours or are associated with yours; and
- the misrepresentation has damaged your reputation or caused you loss (eg by way of lost sales).
For more information on an action under section 52 of the Trade Practices Act 1974 (Cth) for misleading and deceptive conduct, contact Arts Law.
Letter of demand for Trade Mark Infringement
If you believe there has been an infringement of your rights in relation to a trade mark, you may want to send a letter of demand. Such a letter provides the infringer with notice of the alleged trade mark infringement. If the infringer is willing to provide relief and comply with your demands, the costs and complexity of litigation can be avoided.
A letter of demand for trade mark infringement should do the following:
- identify your trade mark and the goods or services that the mark is used for;
- identify the act or acts of the alleged infringer which you believe constitutes an infringement;
- require the alleged infringer to provide a written undertaking to stop doing the offending acts;
- [OPTIONAL] request that the alleged infringer either pay you an amount to compensate you for loss suffered by you or alternatively, that the alleged infringer account to you for profits earned by them which are attributed to the use of the infringing trade mark;
- inform them that if an adequate response is not received within a specified amount of time the writer has the right to commence legal proceedings; and
- provide a document which can be used as evidence in any court proceedings to prove that you informed the recipient of your rights and gave them an opportunity to rectify the breach.
Things to know when sending a letter of demand
When sending a letter of demand you should be careful not to:
- make threats about infringement which cannot be substantiated. A letter of demand
should not be sent unless the trade mark owner is prepared to follow through by instituting court proceedings for the infringement. Therefore, you MUST be able to prove and provide evidence that you are owner of a registered trade mark or a common law trade mark (by showing that the mark has built up a sufficient reputation). Further, you should be able to provide proof of the infringement. For example, provide evidence of infringing brochures and signs; - send a letter which is designed to look like a court document because this is illegal.
It is advisable to send the letter of demand by registered post or fax to confirm receipt and don't forget to retain a copy for your records.
Sample letter of demand for infringement of Registered Trade Marks
[Date]
[Insert name]
[Insert address]
Dear Sir/Madam [or name of the person if known]
I am the registered trade mark owner of [insert the sign/brand name/label etc which has been registered and the registration number] in respect of [insert type of registered goods or service]. As the owner of this registered trade mark, I have exclusive rights under the Trade Marks Act 1995 (Cth).
It has recently come to my attention that you have used [insert the tile/sign/brand name etc] (“Infringing Mark”) for [insert type of goods or service] (“Your Goods/Services”). You are infringing my rights by using my registered trade mark or a mark which is substantially identical or deceptively similar to my registered trade mark :
[insert one or more of the following in accordance with your situation]
1. in relation to the goods and/or services for which my mark is registered;
2. in relation to goods and/or services of the same description as, or closely related to, the goods and/or services for which my mark is registered;
3. [only use this clause if your mark is widely recognised] in a way which, because my mark is so well known in Australia, is likely to indicate a connection between your goods and/or services and me.
Your conduct may also constitute passing off and/or misleading and deceptive conduct in breach of the trade Practices Act.
To rectify this infringement of my rights, I require that you undertake :
[insert one or more of the following options in accordance with your situation]
- immediately to stop all use of the Infringing Mark in relation to Your Goods/Services;
- immediately to stop all advertising and promotion of Your Goods/Services which refers to or uses the Infringing Mark;
- [for goods only] within 21 days to recall and rebrand or destroy all remaining stocks of Your Goods which display the Infringing Mark;
- within 21 days to provide me with details of your sales of Your Goods/Services and pay to me [insert an amount of money] for the use of my trade mark to date [OR] pay me an amount equivalent to the profits earned by you which are attributed to the use of the Infringing Mark; or
- [only if you are prepared to allow them to use your mark in the future] to enter into a commercial licence agreement with me for the use of my trade mark.
You can confirm your acceptance of these undertakings by signing and dating a copy of this letter and returning it to me within 21 days.
If I do not receive an adequate response within [14 or 21] days of this letter, I will take such action as I may be advised in order to protect my rights including, without limitation, legal action for injunctive relief or to recover damages without further notice to you.
You are now on notice as to my rights in my trade mark. I otherwise reserve all my rights.
Yours faithfully
[signature]
AGREED:
_____________________
(signature)
_____________________
(date)
Sample letter of demand for infringement of Common Law Trade Marks
A letter of demand in relation to a common law trade mark will differ considerably to the letter of demand for registered trade mark infringement above. You cannot rely on the Trade Marks Act.
An action for “passing off” and/or an action under the Trade Practices Act for misleading and deceptive conduct may be applicable. By using your mark or a mark that is substantially identical or similar, the infringer is passing off their goods as yours or implying that there is an endorsement or connection between the two. In your letter, you will need to establish that you have a reputation in your trade mark and that the infringer has harmed your reputation or misled customers by using the infringing mark..
Sample letter
[Date]
[Insert name]
[Insert address]
Dear Sir/Madam [or name of the person if known]
I am the owner of [insert your trade mark] (My Trade Mark) which I use for [insert the goods or service on which you use the mark]. I have been using My Trade Mark in Australia for/since [insert the date which you commenced using the mark or the period of time which you have used the mark]. [Also insert a brief description of the extent to which your mark has been used. For example, in advertising, promotional material or letterheads]. Attached is an example of My Trade Mark. [attach letterhead or flyer showing your mark if possible].
As a result, My Trade Mark has a substantial amount of goodwill and a valuable reputation associated with it throughout [identify the market and/or location. For example “the music industry” or “Australia”].
It has recently come to my attention that you have been using [insert the title/sign/brand name/logo etc] (the Infringing Mark) for [insert type of goods or service]. [attach example if possible, eg flyer or brochure or website reference]. The Infringing Mark is substantially identical or deceptively similar to My Trade Mark.
Your conduct described above breaches my rights by:
[use one or more of the following according to your situation]
- passing off your goods/services as the goods or services provided by me under My Trade Mark, or as being connected with my goods/services;
- falsely suggesting that there is an endorsement or sponsorship or association between myself/my company and your product/goods/services; and/or
- misleading and deceiving consumers, or being likely to mislead or deceive consumers, in breach of sections 52 and/or 53 of the Trade Practices Act 1974 (Cth).
I am entitled to protect the reputation and goodwill associated with My Trade Mark.
Accordingly, I require that you undertake :
[insert one or more of the following options in accordance with your situation]
- immediately to stop using the Infringing Mark or any other mark substantially identical or deceptively similar to My Trade Mark;
- immediately to stop all advertising and promotion of your goods and/or services which refers to or uses the Infringing Mark;
- [for goods only] within 21 days to recall and rebrand or destroy all remaining stocks of your goods which display the Infringing Mark;
- immediately to refrain from making any representations which are capable of misleading or deceiving members of the public into thinking that your products/services are somehow connected with mine;
- [OPTIONAL] within 21 days to provide me with details of your sales of goods and/or services under the Infringing Mark and pay to me [insert an amount of money] for the use of my trade mark to date.
- [only if you are prepared to allow them to use your mark in the future] to enter into a commercial licence agreement with me for the use of my trade mark.
You can confirm your acceptance of these undertakings by signing and dating a copy of this letter and returning it to me within [14 or 21] days.
If I do not receive an adequate response within [14 or 21] days of this letter, I will take such action as I may be advised in order to protect my rights including, without limitation, legal action for injunctive relief or to recover damages without further notice to you.
You are now on notice as to my rights in my trade mark. I otherwise reserve all my rights.
Yours faithfully
[signature]
AGREED:
_____________________
(signature)
_____________________
(date)
Instructions and Notes
Insert your relevant details in the square brackets. For registered trade marks check that your trade mark has not expired.
It is essential to understand that the above letters are samples only and you may also need to amend them further to suit your needs and address your particular circumstances. If you are unsure as to the validity of your claim seek legal advice.
Once again be careful not to make un-warranted threats.
Next Steps
If you receive a reply:
If the recipient signs and returns a copy of the letter, he or she is bound by contract to comply with the undertakings. You should follow up to make sure they have done so. Alternatively, if the reply agrees to some of your demands or offers something different AND this is acceptable to you, you should write back confirming the agreement. It may be necessary to draw up an agreement that outlines what they have agreed to do and that they will carry these obligations out. This should also be signed by both sides.
If you do not receive a reply or receive a reply rejecting your allegations:
It is advisable that you seek legal advice from a solicitor at the Arts Law Centre or elsewhere about the strength of your claim. The solicitor may send another letter of demand for you. Finally you may need to commence court proceedings.
Further tips
As you can see there are benefits to registering your trade mark. Proving reputation etc to establish a common law trade mark can be difficult. However, it is important that the mark you register is the one you in fact use and the goods or services you provide fall within the scope of your registration.
More information
IP Australia
IP Australia is the Federal government agency responsible for the registration of Australian trade marks, patents and designs. Their website http://www.ipaustralia.gov.au and State offices provide information on the registration process and searches of their databases. Telephone 1300 651 010 for contact details.
Arts Law Centre of Australia
Information Sheet - Trade Marks
(02) 9356 2566 or tollfree outside Sydney 1800 221 457.