Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark disputes may be heard in a prescribed court by a single judge. The ‘prescribed courts’ are the Federal Court, Federal Circuit Court and supreme courts of each Australian state and territory. In practice, however, most trademark cases are heard in the Federal Court.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Trademark Act outlines the circumstances in which a trademark owner has a right to civil relief for trademark infringement. Broadly, Section 120 outlines three categories of infringement:

  • infringement in relation to goods or services for which the mark is registered;
  • infringement in relation to goods or services that are of the same description or closely related to those for which the mark is registered. Defendants to this action may avoid liability by establishing that their use of the mark is unlikely to deceive or cause confusion; and
  • infringement in relation to goods or services that are unrelated to those for which the mark is registered. This action applies only to trademarks that are 'well known' in Australia, whose use is likely to indicate a connection between the unrelated goods or services and the registered owner of the trademark.

To establish infringement under each of Section 120(1), Section 120(2) and Section 120(3), the defendant must use the sign as a trademark in Australia and the sign used must be substantially identical or deceptively similar to the registered trademark.

Part 14 of the Trademark Act outlines a series of criminal offences in relation to registered trademarks, including the following:

  • Section 145 ‒ falsifying or removing a registered trademark.
  • Section 146 ‒ falsely applying a registered trademark.
  • Section 147 ‒ manufacturing a die, block, machine or instrument that is likely to be used to commit an offence.
  • Section 148 ‒ selling, possessing or importing goods with false trademarks.

A characteristic of the provisions of Part 14 is that they have differing fault elements which must be proven depending on the offence. These elements may be intention, knowledge, recklessness or negligence.

Moreover, Section 151 prohibits the making of false representations that a trademark (or part of a trademark) is registered, or as to the rights conferred by registration, without reasonable grounds.

Who can file a trademark infringement action?

Actions for trademark infringement are usually filed by the registered trademark owner or, with consent of the owner, by an authorised user. Authorised users may also bring an action without consent where the registered owner has failed to bring an action within two months of being requested to do so by the authorised user.

What is the statute of limitations for filing infringement actions?

In all Australian jurisdictions (except the Northern Territory) the limitation period is six years from the date on which the first act of infringement arose. In the Northern Territory, the relevant period is three years.

What is the usual timeframe for infringement actions?

From the commencement of court proceedings to receipt of judgment, a standard Australian trademark infringement case in the Federal Court generally takes between 12 and 18 months. In 2016 the Federal Court introduced concise statement procedures for expedited hearings, although this process is unlikely to be suitable for factually complex cases.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Under the Trademark Act, injunctions may be granted by a court subject to any condition that the court deems fit. These include interlocutory injunctions, which may be awarded before trial to prevent the continuing infringement of the trademark owner's rights.

Broadly speaking, interlocutory injunctions will be awarded where:

  • there is a serious question to be tried;
  • the trademark owner is likely to suffer ongoing injury for which damages will be inadequate; and
  • the balance of convenience favours grant.

Specific to trademarks, the court may consider factors such as:

  • the potential effect of an injunction on third parties;
  • the flagrancy of the defendant's conduct;
  • the ability of either party to meet an award of damages;
  • the owner's delay in bringing the injunction application; and
  • the need to protect the goodwill of established businesses.

Where an interlocutory injunction is granted and subsequently it is found that it should not have been ordered, the plaintiff will ordinarily be required to pay compensation for any damage that the injunction may have caused the defendant ‒ or possibly third parties ‒ during its period of operation.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The civil remedies available for trademark infringement include:

  • interlocutory and final injunctions;
  • damages or account of profits; and
  • orders for delivery up of the infringing goods.

Additional (punitive) damages may be awarded in cases where the defendant's conduct has been particularly flagrant or where there is seen to be a need for deterrence.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Under the Trademark Act, a registered trademark owner (or in certain circumstances an authorised user) can take steps to require the Australian Customs and Border Protection Service (ACBPS) to intercept and seize goods which appear to infringe its registered trademark. Once goods have been seized, the designated owner of the goods (and the registered trademark owner) will be notified. The designated owner has a limited period to make a claim for release of the goods. If such a claim is made, the registered owner must then commence an infringement action. If an action is not commenced, the ACBPS will release the seized goods.

However, the ACBPS’s chief executive officer may require the trademark owner to pay the costs of seizing the infringing goods. This may be in the form of an undertaking to repay the costs of seizure or payment of a security in an amount that the ACBPS chief executive officer considers sufficient to repay its expenses.

Defence

What defences are available to infringers?

Various acts which do not constitute infringement are outlined in Sections 122 to 124 of the Trademark Act.

Where all of the elements for infringement have been established, a defendant may rely on a number of defences outlined in Section 122 of the Trademark Act:

  • Section 122(1)(a) ‒ the trademark is the defendant's name or the name of its place of business, and is used in good faith.
  • Section 122(1)(b) ‒ the trademark is used descriptively, in good faith, to indicate a characteristic of the goods or services (eg, quality or geographical origin).
  • Section 122(1)(c) ‒ the trademark is used in good faith to indicate the intended purpose of the goods (eg, as an accessory to branded goods).
  • Section 122(1)(d) ‒ the trademark is used for the purpose of comparative advertising.
  • Section 122(1)(e) ‒ the defendant is exercising a right to use a trademark as granted under the Trademark Act. This can include registration rights or authorised user rights.
  • Sections 122(1)(f) and 122(1)(fa) ‒ the defendant would obtain a trademark registration if the person were to apply for it.

Section 123 deals with situations where a trademark has been applied for by or with the consent of the registered owner. The defence applies in relation to use of similar goods or similar services and could apply to the sale of second-hand goods and to parallel imports.

Additionally, Section 124 provides a 'prior use' defence where, broadly speaking, the defendant can establish that it has been using the mark from a period before the owner commenced using or registered its mark. This prior use must have been continuous and constitute use “as a trademark”. 

Appeal

What is the appeal procedure for infringement decisions?

The Federal Court (particularly the full Federal Court) has jurisdiction to hear appeals from any judgment or order made by another prescribed court. These include judgments of state courts, which may not be appealed to the usual appellate body. Further appeals to either the full Federal Court or the High Court of Australia may be brought only with the special leave of that court.