A logo creates a reputation for your business that is recognisable to consumers. When you have worked hard to promote that reputation, it is frustrating if you believe that another company has copied your logo. Fortunately, if your logo has been trade marked, there are options available to stop that business from using the mark. This article sets out the different legal options available for trade marked logos. 

What is a Trade Mark?

A trade mark is a sign or symbol which is used to distinguish a product or service from other traders in the same industry.

The McDonald’s golden arches, the Nike tick and Apple’s apple logo are examples of well-known trade marks.

You have the exclusive right to use your logo once your trade mark has been registered. This is as long as it is within your registered category of goods or services. If someone uses a substantially identical or a deceptively similar logo for similar goods or services, this may amount to trade mark infringement.

What does substantially identical mean? In deciding whether two marks are substantially identical, they are compared side-by-side. Then, a legal professional will search for similarities or differences in their essential features. 

What does deceptively similar mean? This is a little harder to determine. Firstly, a legal professional compares the overall impression your logo and the other mark. The trade mark is considered “deceptively similar” if the average consumer would be likely confused.

The Other Business is Using a Similar Logo, But Not Applying for a Trade Mark

To prove that the other company is infringing your trade mark rights, you will need to be able to show that you own the rights to the logo. You should contact a trade marks lawyer to determine the best strategy going forward. You also don’t want to give the other business time to prepare a defence. A lawyer can then look at the nature of the infringement, and may recommend one or more of the following:

1. Sending a Cease and Desist Letter

This is a common first step that intellectual property (IP) owners take when there has been an infringement on their IP. It is a low-cost step that avoids a significant legal dispute. Before sending the cease and desist letter, consider:

  • how the other business infringed your IP;
  • the effect it has had on your business; and
  • whether you want to claim compensation for the infringement.

If the letter did not work and the infringer is based in China, you can file your complaint to the Administration of Industry and Commerce (AIC). If the infringer is based in Australia, you may want to commence a court case.

2. Court Case

Taking a matter to court is expensive and time-consuming, and you may first have to take preliminary steps to resolve the issue. These include:

  • sending a letter of demand; or
  • pursuing alternative dispute resolution (mediation, arbitration or expert determination).

A letter of demand is quite similar to a cease and desist letter. It advises the infringer of your IP rights and demands that their conduct is halted.

Mediation is a form of formal negotiations that is guided by a neutral third party.

Arbitration is similar to mediation, except the neutral third party makes a decision at the end of the negotiations.

In expert determination, an expert in the field will make a final decision regarding the dispute.

You will first have to prove that the business’ logo is substantially identical or deceptively similar to your mark. You will also need to show that the business used the logo in connection to similar goods or services.

If proved, the court has the power to stop the business from using your logo or other branding material. The court also has the power to order the infringing party to pay you compensation or the profits that they obtained from using your logo.

Key Takeaways

A logo is a very valuable part of your marketing material. If protected with a trade mark, you have exclusive rights to use that logo in its registered category of goods or services. If another business in the same or related category is using a logo similar to yours, they are infringing on your trade mark rights.

The legal options available include:

  • sending a letter of demand; and
  • taking court action.

To find out which legal action to take if you believe that another business is using a similar logo to yours, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

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