So You Want to Sue

Before embarking on an action for infringement of your trade mark rights, you need to properly understand the scope of your own rights. 

This includes:

  • 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.

Developing an Effective Trade Mark Registration Portfolio

Some key aspects to developing an effective filing strategy apply to all types of intellectual property. You and your IP advisor should work closely together to:

  • understand your key markets now
  • identify how to maximise coverage
  • identify where you want to be in five years’ time
  • know what protection is time-critical for application
  • know which countries should be prioritised, and which can wait

Identify the elements that maximise protection by registration

Trade marks can be registered in many different formats with differing levels of scope of exclusive rights.  For example, use of a logo containing a word may infringe a standard character registration for the word where it would not infringe a logo registration also including the word.  Therefore, while a logo can be easier and cheaper to secure, it might not provide the best rights for your business.

Cover your goods and services as well as the law allows

Trade mark applications in most countries are filed into one or more of 45 different classes which group together similar goods or services.  For many products, such as “wine” or “shoes”, a single class will stand out as the right class for registration.  For other products or services, for example “camping equipment”, several classes might be involved. 

An experienced IP advisor will be able to help you develop a filing programme that is broad enough to cover your key goods in a cost-effective way, maximise your ability to sue for infringement, and avoid a registration so broad that it may be vulnerable to attack.

Make sure your key geographies are covered

Because trade mark registrations are only enforceable in the country in which registration is secured, you need to consider whether you should register your trade mark overseas.  If your business is likely to expand internationally, you may want to have the registration process underway to reserve your position on the Register for your key trade marks.  In some countries trade mark rights can only be secured by registration (such as China), or there is a significant risk of third party registration of international brands (again, China).

Your IP advisor will be able to work through filing schemes, such as claiming Convention Priority or using the Madrid Protocol International Registration, to maximise bang for your buck.

Keep an Eye on your Competitors

A successful launch is the end of the first stage – but you must keep on top of your market: do not rest on your laurels!

Regular review of your key markets and competitor activity will help alert you to other traders encroaching upon your business and trade marks.

A sudden bump in trade mark applications can be the first sign of a trader preparing to enter a new market, or expanding its range of goods and services in a way that may have some impact on your business.  In addition to your own review of market place developments, your IP advisor can craft special watching programmes to help identify when trade marks are accepted for registration in your key markets either lodged by named competitors, for a particular product or service range, or for trade marks the same as or similar to your key trade marks.

With this surveillance information to hand you can move swiftly to address any potential infringement of your registered trade mark rights.

Keep your registered protection up to date

The value of a good portfolio of registered trade mark rights is usually realised in a strong defensive position that allows your business to grow.  This ultimately results in a high IP valuation that increases the net worth of your business.

As your business grows, any new developments should be identified early and assessed for potential trade mark registration. An up to date trade mark registration portfolio will allow you to focus on retaining a competitive advantage of enforceable exclusivity.

While holding registered trade mark rights is not all about litigation, a robust portfolio of rights that are well filed and clearly claimed communicates to your competitors that you take your rights seriously.  The potential for an expensive Court case and costly damages awarded due to infringement of registered trade marks is a serious deterrent to many potential infringers.

A robust portfolio of registered trade marks can often warn off a large number of copycat businesses who would otherwise seek to ride the coat-tails of your success.

Be prepared to try again

As you review your business development and growth, you should keep your IP advisor in the loop.  If you find a path of action is not paying off, re-assess your options. Working with your IP advisor you can review earlier iterations of trade marks to identify the best way to leverage your registered trade mark rights for success, and avoid the unnecessary cost in retaining trade mark registrations which are no longer valid or needed.

Doing Your Homework

As with most achievements in life, the first steps towards success are preparation and planning.

Registering a portfolio of trade marks without a clear business plan can be costly and may not give your business the advantage that you need.  Before undertaking steps for trade mark registration, the impact of each trade mark element for your business and your goods and services should be carefully considered from the stance of where your business is now, and with a view to your plans for the future. 

Having a good idea of what you want to achieve will help you decide the best way to invest in valuable and long-standing trade mark rights through registration.

An experienced IP advisor will be the best person to provide an overview of your trade mark position and assist in the formation of a strong trade mark portfolio. But there are preliminary steps you can and should consider when choosing potential trade marks for your business.

An Early Stage Checklist

  • Is your trade mark going to help your business stand out from the crowd?
  • Is your trade mark free to use in your key markets?
  • Can you register your trade marks in your key markets?
  • Will the right entity own the trade marks and enable you to maximise your value for money spent in registration?

Make it distinctive!

An effective trade mark will allow your business’s goods and services to stand out from the crowd.  As a rule of thumb, the more distinctive your trade mark, the wider your area of exclusivity and the better you can prevent other similar trade marks being used.

A trade mark that leans heavily on descriptive references to a particular product will be more limited than a wholly invented and distinctive brand.  While these trade marks could be registered, you may find you cannot stop other traders using the similar branding with the same descriptive reference. 

This assessment should also encompass all the ways you might use trade marks in your business, including sub-brands, logos and by-lines. 

Is your trade mark free to use? 

Having settled on what sounds like a good trade mark, you should check that it is free to use before you commit to it. 

Trade mark searching is specialised and it takes experience and knowledge of case law trends to provide a good assessment of risk.  Therefore, a trade mark search conducted by a proper advisor is the first and most valuable step in creating a trade mark portfolio.

A search of the Register will alert to any risks of trade mark infringement through existing registrations, but must be broad enough to alert to possible infringement of similar trade marks covering similar goods and/or services, without being so broad that the information is unwieldy and hard to analyse.

A trade mark search should also cover a variety of market place sources to assess the risk in countries that recognise unregistered trade mark rights (often called “common law rights”) developed through use, such as including New Zealand, Australia, the United Kingdom and the US.  Having a good knowledge of the tests applied in case law is essential to assess the risk that a trader with a reputation may be able to stop your use and possibly successfully take action under fair trading legislation or for passing off.

Can you register your trade mark?

Once the first hurdle has been overcome, and a trade mark is found that is free to use, the next step is to establish if the trade mark is registrable. 

Most IP Offices will object to a trade mark if it is not capable of distinguishing your goods or services, or if it is so similar to an existing registration or application that consumers may be confused.

If you have conducted searches before application, your IP advisor will already be able to advise you on these points.

Will the right entity own all IP created?

You cannot benefit from rights which you do not own, so it is vital to ensure that you understand the chain of title.

Often the bright mind behind a business will need to bring in a team to help actualise the vision.  This may involve people outside of the business or may result in IP developed before any formal company structure is in place to hold those rights. 

From the outset, the terms on which parties work together should be clearly understood, communicated, and documented.  This should include consideration of about copyright ownership for any artistic material, including logos, that may need to be assigned to the entity who will own the trade mark registration.  Further, whether the registered owner is an individual or a company should be decided early on and any necessary licences or written authorities settled and agreed at the outset.

Expenditure at the early stages in proper enforceable contracts, assignment of rights, and setting up the correct ownership structure can avoid expensive problems down the track.