Summary
- Registering your trade mark with IP Australia grants exclusive rights to use, license, and sell your mark in Australia, making it significantly easier to enforce your rights against infringers compared to pursuing unregistered trade mark claims through passing off or misleading conduct actions.
- Trade mark owners are responsible for monitoring the marketplace for infringement, as IP Australia does not actively police misuse, and should develop a selective enforcement strategy that prioritises commercially significant infringements rather than pursuing every instance.
- Enforcement typically begins with a cease and desist letter, but businesses should seek legal advice before issuing one to assess the strength of their claim, as an unfounded cease and desist can expose the sender to unwanted legal proceedings.
- This article is a guide to protecting trade marks online for business owners in Australia, explaining registration, monitoring, and enforcement strategies to prevent trade mark misuse and infringement.
- LegalVision is a commercial law firm that specialises in advising clients on intellectual property law and trade mark protection.
Tips for Businesses
Register your full trading name, logo, and any other distinctive identifiers with IP Australia as early as possible to establish clear ownership and simplify enforcement. Display the ® symbol on all registered trade marks and include clear terms of use on your website to deter potential infringers. Conduct regular online searches to monitor for misuse and allocate a budget for enforcement action against commercially significant infringements.
Operating your business online significantly increases the risk of others misusing your trade mark, and without a clear strategy to protect it, your brand can suffer serious damage. Taking proactive steps to register, monitor and enforce your trade mark rights is essential in today’s digital marketplace. This article outlines five key ways to protect your trade mark online.
1. Register Your Trade Mark with IP Australia
Registering your intellectual property is one of the best ways to protect it. If you successfully register your trade mark with IP Australia, you gain the exclusive rights to use, license and sell your trade mark in Australia. This means that you can enforce your rights in the instance where someone commits trade mark infringement. You should register your full trading name and also any other identifiers you use, such as your logo or an acronym.
For example, if a tech company sells smartphones using the Apple logo, this would be considered trade mark infringement.
On the other hand, if you do not register your trade mark, you cannot exercise your rights as easily. For unregistered trade marks, you either pursue a claim for ‘passing off’ or for misleading and deceptive conduct. Nevertheless, to pursue both causes of action, you have the additional burden of proving your rights concerning your unregistered trade mark. Whereas if you successfully register your trade mark with IP Australia, there is no dispute about who is the owner of the trade mark.
2. Discourage Misuse
You can use simple methods to discourage others from misusing your trade marks online. Firstly, registered trade marks should bear the reserved symbol ‘®’. This notifies potential infringers that you have rights regarding your trade mark.
Similarly, you can include a section on your website that states the terms and conditions for the use of your material, including the consequences of misusing your trade mark. This way, you can discourage online users from copying or misusing your trade mark.
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3. Monitor The Marketplace for Infringement
Many trade mark owners believe that it is IP Australia’s role to monitor the marketplace for potential infringement. In reality, it is your responsibility as a trade mark owner to enforce your trade mark rights.
For this reason, you should develop a monitoring strategy to identify potential infringements. This can mean reviewing the products your competitors advertise and conducting regular searches on the internet to identify any misuse of your trade mark. While monitoring the marketplace can be costly, it is a worthy investment considering it can help preserve your brand image.
4. Develop an Enforcement Strategy
Another way you can protect your trade mark online is by developing an enforcement strategy. However, since enforcing your trade mark can be costly and time-consuming, it may not be worth pursuing every instance of infringement. For example, internet users are unlikely to be pursued for downloading infringing copies of material.
On the other hand, suppose you have a registered trade mark protecting your business in the hospitality industry. In that case, it may not be worth pursuing legal action where a tech company uses a similar mark since it operates in a different sector and may be unlikely to confuse or mislead consumers. Therefore, a selective enforcement strategy could be useful to preempt instances when you should enforce your trade marks and allocate a budget accordingly.
5. Enforce Your Rights
Lastly, you should take steps to enforce your rights if someone infringes your trade mark. This usually begins by issuing a cease and desist letter to the infringer requesting that they:
- stop misusing your trade mark; and
- act accordingly within the time you requested.
However, issuing a cease and desist on an unfounded claim for trade mark infringement can lead to unwanted legal proceedings against you. Therefore, if you identify a potential infringement, it is wise to seek legal advice to assess the strength of your claim before taking action.
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Key Takeaways
Operating your business online can put you in greater danger of trade mark infringement. To prevent others from misusing or infringing your trade mark online, you should:
- register your trade mark with IP Australia;
- discourage misuse by using trade mark symbols and notices;
- monitor the marketplace for infringement;
- develop a selective enforcement strategy; and
- enforce your rights if you have a strong claim.
If you have any questions about protecting your trade mark, LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced trade mark lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 1300 544 755 or visit our membership page.
Frequently Asked Questions
A person commits trade mark infringement if they use a trade mark that is substantially identical with, or deceptively similar to, your registered trade mark and in relation to the same of similar goods or services that your trade mark is registered.
If you successfully register your trade mark with IP Australia, you gain the exclusive rights to use, license and sell your trade mark in Australia.
You can pursue a claim for “passing off” or misleading and deceptive conduct. However, both require the additional burden of proving your rights over the unregistered trade mark, making registration significantly more straightforward.
No, a selective enforcement strategy is advisable. For example, pursuing a company in a completely different industry using a similar mark may not be worthwhile if consumers are unlikely to be confused or misled.
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