So You Want to Sue
This is part 3 of 3 in our series on How to Create and Retain the Best Registered Trade Mark Rights for your Business.
Part 1: Doing Your Homework
Part 2: Developing an Effective Trade Mark Registration Portfolio
Before embarking on an action for infringement of your trade mark rights, you need to properly understand the scope of your own rights.
- registered trade marks
- unregistered trade marks
- copyright in logos, artistic works and images
- business get-up and market place reputation
- awareness of weak points in your own position, such as trade marks not in use, or established co-existence of the offending trade mark in the market place
First, Put Your Own House in Order
You should assess your own registered trade mark rights to make sure the right trade marks are registered for the rights goods and services to support an action for trade mark infringement. You should also make sure the correct entity owns the registration and can take the legal action.
A trade mark registration in the wrong owner name may mean that not only will an action for infringement fail, the registration itself could be vulnerable to removal.
Routine review in conjunction with your IP advisor of ownership structures, changes to goods or services, and the scope of registered protection will help ensure that you are always in the best position to assert your rights if and when you need to.
Assess your Rights and Identify the Best Path of Attack
As a rule of thumb, use of a trade mark may constitute infringement under the Trade Marks Act if:
- A trade mark registration exists; and
- Someone other than the registered owner uses a trade mark which is the same as or similar to the registered trade mark on the same or similar goods or services;
- And in the case of similar but not identical overlap, there is the likelihood for consumers to be confused.
Where the scope of a registered trade mark does not quite match the offending trade mark in use, succeeding in an action for trade mark infringement along might not be straightforward.
However, if your registered trade mark rights might be insufficient to take action for trade mark infringement, you might have a reputation in trade, and be able to show the offending trade mark conflicts with that reputation. In that case you may be able to sue for breaches of the Fair Trading Act and/or for the tort of passing off, either as a stand-alone action or in conjunction with an action for infringement of registered trade mark rights.
In addition to your trade mark rights, you should not forget copyright. Logos and other original artistic material that form part of your business identity may also attract inherent copyright that does not require any registration. An action for copyright infringement can be bundled together with other heads of action to allow you to fully assert your rights.
Partnership for Success
Creating registrable intellectual property and keeping registrations up to date are key elements of carving out an area of exclusivity for a business.
The right IP advisor will be able to take a holistic view of your intellectual property rights, both registered and un-registered, to maximise your ability to carve out an area for exclusive rights, and then assist with safeguarding those rights.
Working with an IP advisor at the early stages in trade mark creation and protection, as well as ongoing review throughout the life of your business, will help you ensure you have the best registered trade mark rights.
Like to talk more about how we can help you? Contact us today.