Trade mark registration gives you the exclusive right to use your trade mark in Australia. This means you can prevent others from using your trade mark concerning similar goods and services your business offers. This article explains what rights you may have to prevent counterfeits and the steps you can take to prevent counterfeiting.
Your Trade Mark Rights After Registration
Once you register a trade mark, you gain the exclusive right to use your trade mark concerning your business’ goods and services. There are also certain offences within the Trade Marks Act that help protect your trade mark rights once you register your trade mark.
For example, it is an offence under the Trade Marks Act to:
- falsify a registered trade mark, which is making your trade mark the same or a deceptively similar to a registered trade mark;
- alter or remove a trade mark, knowing it is a registered trade mark; or
- sell, possess, distribute or import a good, knowing the trade mark has been falsified or removed.
These offences will only apply if you have registered your trade mark. In this sense, the first step to protecting your brand from counterfeits is registering your trade mark.
Monitor the Market for Counterfeits
It is a common misconception that IP Australia monitors and polices the marketplace to detect potential infringements. However, once you register your trade mark, it is your responsibility to take action to stop the production and sale of counterfeits.
You should be proactive and establish a policy for conducting regular searches online and in the market for counterfeits. For example, this could mean hiring staff to review the products your competitors advertise and sell or conducting frequent inquiries on the internet to identify any misuse of your trade mark.
While monitoring the market for infringement can prove costly, it is a worthwhile investment considering it can help you identify counterfeits.
Continue reading this article below the formSend a Letter of Demand
If a business already sells counterfeit goods in Australia that infringe your trade mark rights, you should send the infringer a letter of demand. The letter should:
- identify the infringement;
- outline your trade mark rights;
- provide an opportunity to rectify the infringement, such as requiring them to take specific action; and
- inform them of the next steps if they do not comply with your demands, such as litigation.
You can often resolve the matter by exchanging letters, which saves you the high cost of resolving an issue via litigation. However, where you require urgent intervention, for example, where there is a risk that evidence may be destroyed, you may need to take court action.
Lodge a Notice of Objection with the Australian Border Force
If you are concerned that a counterfeit good can damage your business’ reputation if the person infringes your trade mark rights by importing their goods, you can lodge a notice of objection with the Australian Border Force (ABF). A notice of objection is a legal document that allows the ABF to seize imported goods that infringe trade marks. The notice is valid for four years.
The ABF can only seize counterfeit goods if they are:
- subject to customs control;
- covered by a valid notice of objection;
- appear to infringe trade mark rights; and
- are imported for commercial purposes.
If the ABF seizes counterfeit goods, the ABF will notify you and the importer in writing. In the event that the importer claims the release of the seized goods, you have ten working days to decide whether to:
- commence legal action; or
- consent to the release of the goods to the importer.
If the importer does not claim the release of the seized goods, the ABF considers the goods forfeited. Consequently, the ABF will dispose of the goods.
Legal Action
Litigation may be required to enforce your rights where you cannot resolve the infringement informally. Court proceedings can grant relief if you succeed. This can include damages for your loss due to infringement and an order to destroy all infringing material. Nevertheless, it is always important to weigh whether it is in your commercial and personal interests to proceed with litigation before proceeding with court action.
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Key Takeaways
Trade mark registration is the first step to protecting your brand from counterfeits. This is because trade mark registration gives you the legal right in Australia to prevent others from using your trade mark concerning similar goods and services. However, once you register your trade mark, it is your responsibility to:
- stop the production and sale of counterfeits;
- monitor the marketplace for potential infringement;
- issue a letter of demand if a business is already selling counterfeit goods using your trade mark in Australia; and
- lodge a notice of objection with the ABF to prevent the importation of counterfeit goods.
If you need assistance enforcing your trade mark rights, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
A letter of demand can notify potential infringers of their misconduct and request that they stop their infringing conduct.
A notice of objection is a legal document that allows the ABF to seize imported goods that infringe trade marks.
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