In 2009, Gallo Winery successfully showed that Lion Nathan had infringed their ‘BAREFOOT WINE’ trademark by marketing ‘BAREFOOT RADLER’ beer.

If this sounds a little too familiar to you, you may be a victim of trademark infringement.

What is a trademark name?

A trademark is a sign used to distinguish your goods or services from the goods or services of others. Trademarks can include any word, shape, brand, colour or name.

How can registered trade marks be infringed?

If you have registered your trade mark with IP Australia, it may be infringed when another person uses a sign that is substantially identical or deceptively similar:

  • to your trademark, on the same type of goods or services as those that you have marketed with your registered trademark;
    • Example: using the name ‘David Jones’ to market a new department store.
  • to your trademark on goods or services that are of the same description or are closely related to the goods or services that you have marketed with your registered trademark; or
    • Example: a wine manufacturer using ‘Corona’ as a trademark.
  • to your well-known trademark in relation to goods and services that are unrelated or not closely related to the goods and services that you have marketed with your registered trademark.
    • Example: using the name ‘Coca Cola’ to market a range of clothing.

How can unregistered trademarks be infringed?

If your trademark is not registered, you may be able to bring a type of claim known as a “passing off” claim. This is typically a harder claim to prove than an infringement claim for a registered trademark, and comprises a few extra elements to prove, namely:

  1. that your unregistered trademark has a recognisable reputation in connection with the provision of goods or services in a certain area (e.g. Australia);
  2. another person has used your trademark in a misrepresentative manner; and
  3. this misrepresentation has led you to suffer losses of business or profit.

What should I do next?

You may wish to consider some of the following questions about the validity of your trademark before taking legal action.

  • Has the registered owner of your trademark recently used that trademark or authorised it for use by another? Your business competitors may be able to have your trademark removed if not. Note that there are complex rules around what constitutes “authorised use”.
  • Is your trademark name a generic term in your industry or a phrase that merely describes your goods or services? If so, the registration of your trademark may be revocable.
  • Are you or your business entity the registered owner of the trademark? Alternatively, has the trademark been licenced or assigned to you by another? These structural issues can affect the validity of your trademark.

If you believe your trademark has been infringed, you may wish to issue a ‘Cease and Desist’ letter. These should only be sent where there is a legal basis for accusing another person of infringing your trademark; threats of trademark infringement have potential risks, including a claim for groundless threats of trademark infringement.

If the infringement of your trademark continues, you may need to go to court. From there, you may be able to obtain a court order prohibiting further use of your trademark and monetary compensation based on either your loss or the other person’s profit from the trademark infringement.