Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark infringement proceedings are brought as a civil suit in the Federal Court or Federal Circuit Court. Both courts adopt similar practice and procedure; however, the Federal Circuit Court is intended to provide a faster and more accessible forum for the determination of trademark matters. The filing fees are lower than the Federal Court but the recoverable costs are typically lower in the Federal Circuit Court.

Criminal proceedings for trademark enforcement are available in limited circumstances. Some acts that constitute trademark offences are also offences that can be prosecuted under the Criminal Code Act 1995 (Cth).

Procedural format and timing

What is the format of the infringement proceeding?

It is the intention of the courts that intellectual property cases proceed as efficiently as possible and that pleadings be more informal and concise. For this reason, evidence is usually in the form of affidavits. Typically, only limited discovery will be available and it at the judge’s discretion. Live testimony by witnesses and expert or survey evidence are also allowable but are subject to Court rules and directions of the judge.

The length of the proceedings will depend on the facts of the case, although proceedings in the Federal Circuit Court are typically determined much earlier than Federal Court proceedings.

Burden of proof

What is the burden of proof to establish infringement or dilution?

To be successful in an action for trademark infringement, the plaintiff must establish that the defendant has, without proper authority, used as a trademark a sign that is substantially identical with, or deceptively similar to, the plaintiff’s trademark in relation to goods or services in respect of which the trademark is registered, and that the defendant does not have an applicable defence.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

An action for trademark infringement may be brought by the registered trademark owner or an authorised user. The authorised user should obtain the consent of the registered owner to bring an infringement action, unless:

  • the registered owner has neglected to grant consent or has refused to grant consent when called upon by the authorised user; and
  • there is no agreement in place that prevents the authorised user from bringing the proceedings independently of the registered owner.

 

While it is technically possible for any person to institute proceedings to commit a person for trial for a criminal offence under the Act, criminal proceedings are more likely to be brought by the Australian Federal Police.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The Act provides a procedure by which the registered owner or authorised user of trademark can file with the Australian Border Force (ABF) a notice of objection to the importation of goods that infringe the trademark. A notice of objection must be accompanied by a Deed of Undertaking from the objector agreeing to repay the costs of any seizures made by the ABF.

Once the notice is registered, the ABF must seize goods bearing the trademark or a substantially identical or deceptively similar trademark unless they are satisfied that there are no reasonable grounds to believe that the importation of the goods would infringe the trademark. If goods are seized, the owner of the goods must make a claim for release of the goods. If a claim for release is made, the objector must either commence legal action or consent to the release of the goods. If legal action is filed, the goods will be held by the ABF until a final determination has been made by the court as to whether the goods should be forfeited. Usually, goods that are forfeited are destroyed.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Directions for discovery in trademark infringement proceedings are rarely made, and if made are typically limited. The court will consider the relevance of the discovery, the scope of the discovery orders sought and the expense of compliance with the discovery orders. Requests for the production of documents referred to in pleadings or evidence may be made. A summons or notice of production may be issued against non-parties in limited circumstances, including parties outside of the country.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Time frames for preliminary injunctions, trials and appeals will vary substantially depending on the choice of forum, the complexity of the case and the deadlines set by the relevant court. Proceedings in the Federal Circuit Court are typically determined much earlier than Federal Court proceedings. Motions for interlocutory injunctive relief may be heard and determined within one or two months after filing, while a full hearing and determination of a dispute in the Federal Court will generally take 12 to 18 months, although currently delays are not uncommon.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period for a trademark infringement action in Australia is six years from the date on which the first act of infringement arose.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Costs are allowable for work done and services performed. The amount recoverable will depend on the circumstances of the case, including:

  • the complexity of the matter;
  • the difficulty or novelty of the questions raised in the matter;
  • the skill, specialist knowledge and responsibility involved;
  • the number and importance of any documents;
  • the value of the trademarks involved;
  • research and consideration of questions of law and fact;
  • the care and conduct of the lawyer; and
  • the time allowed for completion of work.
Appeals

What avenues of appeal are available?

Decisions from a judgment or order of a single judge of the Federal Court or Federal Circuit Court can be appealed to the to the Full Federal Court with the leave of the Federal Court. A direct appeal or further appeal can also be made to the High Court provided special leave is granted by the High Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Acts that are not held to constitute infringement include:

  • the plaintiff’s delay is a factor in the defendant’s claim to laches or acquiescence;
  • the trademark is the defendant’s business name;
  • the defendant uses the trad mark to indicate a characteristics of goods or services, such as their kind, quality, quantity, intended purpose, value, geographical origin or time of production or rendering;
  • the defendant uses the trademark for the purpose of comparative advertising;
  • the defendant is exercising its right to use the trademark as the registered owner of the same trademark for the same goods and services;
  • the defendant would be able to obtain registration of the trademark if it applied for it, for example, as an ‘honest concurrent user’ of the trademark;
  • the defendant is able to establish prior use of the trademark;
  • the registered trademark is subject to limitations or disclaimers, such that the defendant’s use does not infringe the plaintiff’s exclusive rights;
  • the plaintiff has impliedly consented to the defendant’s use of the trademark;
  • the plaintiff relied upon a representation by the plaintiff that it had no objection to the defendant’s use of the trademark; and
  • the plaintiff has fraudulently used the mark or falsely claimed that the trademark is protected.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

In an action for trademark infringement, the Court may grant an injunction and, at the option of the plaintiff, either damages or an account of profits.

In a claim for interlocutory relief the Court will consider:

  • whether there is a serious issue to be tried;
  • whether monetary damages would be an adequate remedy; and
  • whether the balance of convenience favours the grant of interlocutory relief to the plaintiff.

 

Typically for the grant of an interlocutory injunction the plaintiff will be required to provide an undertaking that, if it fails to establish its case at trial, it will pay to the defendant damages reflective of those caused by the grant of the injunction.

Ex parte orders may also be granted, including Mareva injunctions to restrain the disposal of assets or Anton Piller orders for the preservation and inspection of articles or documents prior to trial.

Punitive damages are not available but the Court has discretion to award additional or exemplary damages, depending on the flagrancy of the infringement, the need for deterrence, the defendant’s conduct following infringement and any benefit that the defendant accrued because of its infringement.  The Court may also order that the defendant erase the infringing trademark from goods in its possession of control, and if erasure is not possible or is impracticable, it may instead order the delivery up or destruction of goods.

Possible criminal penalties include fines or imprisonment, that infringing goods be seized and destroyed, or that the proceeds of the infringement be confiscated.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Trademark cases are commonly mediated as part of pretrial procedure at the Federal Court or Federal Circuit Court. The benefits of mediation include more timely resolution and lower costs if the matter can be resolved before trial, greater customisation of the outcome, finality of settlement and confidentiality in the mediation process. A settlement agreement reached as a result of mediation is legally binding and enforceable.

If the parties are not able to reach an agreement, the matter will return to the judge and a discussion may be had as to preparations for trial.

Parties to a dispute may alternatively take advantage of the ADR options on offer from the World Intellectual Property Organization, such as mediation, arbitration or expert determination.