Intellectual Property: Trademarks - Guides
Trademarks
10. Enforcement
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Last updated: 22 Sep 2015
- The majority of trade mark litigation is conduction in the Federal Circuit Court. Cases are governed by a complex set of procedural rules. However most cases follow a similar format:
- the claim is filed;
- the defence is filed;
- the parties exchange lists of relevant documents in their possession (a process called discovery);
- the documents are inspected by each party;
- written statements of evidence are exchanged. This is usually done sequentially with the claimant filing (delivering to the court) and serving (delivering to the other party) their evidence then the defendant filing and serving their reply;
- the matter is heard in court with examination and cross examination of witnesses and submissions by the lawyers; and
- a judgment is issued.
- Section 120 of the Trade Marks Act 1995 (Cth) provides for registered trade mark infringement and enforcement. Critical issues to consider are:
- whether the respective trade marks are substantially identical or deceptively similar;
- what goods or services the other business is using the mark in relation to; and
- whether the other trader is using the mark as a trade mark.
- The owner of an unregistered trade mark may enforce their right to that trade mark against another business under the common law action of passing off or under the consumer protection legislation prohibiting misleading or deceptive conduct. Typically a claimant will need to establish:
- it has reputation in the disputed mark in the particular geographic locality in which the breach of rights occurred;
- the reputation applies to the particular type of goods or services in which the alleged breach of rights occurred;
- the unauthorised use of the unregistered trade mark will or is likely to cause confusion amongst its customers;
- that confusion will cause actual loss to its business or a strong likelihood of this; and
- the other party has no legitimate right of its own to use the disputed mark.
- The requirements to establish reputation and resultant damage can make enforcing unregistered rights more expensive and more difficult than registered trade mark infringement proceedings.
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