One of the benefits of trade mark registration is gaining the exclusive right to use your mark. Therefore, if someone sells, distributes or imports products using your trade mark or a deceptively similar one without your consent, you can prevent them from doing so by enforcing your intellectual property (IP) rights. If you become aware of imported goods that infringe on your trade mark rights, you should take steps to enforce your IP rights. This article will discuss three options you can explore to prevent imported goods that infringe on your trade mark rights.
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Stop the Infringing Goods at the Australian Border
If you are concerned that someone is importing products that infringe on your trade mark rights, you should 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 ABF can 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 that they have done so in writing. From this point onwards, the importer has ten days to either:
- forfeit the goods; or
- claim the release of the goods.
If the importer forfeits seized goods, the ABF will dispose of the goods. However, if the importer does not respond to the ABF within ten days, the ABF will also consider the goods forfeited.
However, if 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.
Consequently, the ABF will release the goods to the importer unless there is a court order to stop the release within 20 working days of you commencing legal action. Then, depending on the outcome of the legal action, the ABF will release the goods to the importer or dispose of them.
Prevent the Sale of Infringing Goods in Australia
If a business already sells counterfeit goods using your trade mark or a deceptively similar one, you should speak to an experienced trade mark lawyer. A lawyer can help you decide whether an infringement will likely be made out and what steps you can take.
Generally, you can issue the infringer with a letter of demand. The letter should:
- identify the infringing conduct;
- outline your trade mark rights;
- provide the business owner with an opportunity to correct the situation i.e. stop selling infringing goods; and
- inform them of what will happen if they do not comply with your demand i.e. you might pursue litigation.
Take Legal Action
However, you might be in a situation where you require urgent intervention. For example, there may be a risk that evidence may be destroyed. Alternatively, you may be in a situation where you cannot resolve the matter with the infringing party by exchanging letters.
In these instances, you may litigate the matter. While court proceedings can be time-consuming and expensive, courts have broad powers to grant you relief if you succeed. This can include damages for the loss you suffered due to the infringement and an order for the destruction of all infringing material.
In saying that, it is always important to weigh up whether court action will satisfy your commercial and personal interests. A crucial factor that will affect your decision to litigate is the strength of your case and the likelihood of obtaining the desired outcome. To better understand the likelihood of litigation, you should speak to a trade mark disputes lawyer.
Key Takeaways
Counterfeit goods can damage your brand. For this reason, it is important to enforce your registered trade mark rights if someone sells, distributes or imports products using your trade mark. To protect your brand, you can:
- lodge a notice of objection with the Australian Border Force to prevent the importation of infringing goods;
- issue a letter of demand to a business if they are selling infringing goods in Australia; and
- take legal action if it is necessary in your circumstances.
If you have any questions about infringing goods, our experienced trade mark 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
The business could be committing an offence under the Trade Marks Act. Under the Act, it is an offence to sell, possess, distribute or import a good, knowing that the trade mark has been falsified or removed.
A notice of objection is a legal document that allows the Australian Border Force to seize imported goods that infringe on trade marks.
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