How to Monitor my Trade Mark for Infringement?
A trade mark, sometimes called a ‘brand’ is used to signify that products or services originate from a particular entity or business.
Proprietary rights in a trade mark may be obtained either by use (so-called ‘common law’ rights) or by registration (‘statutory rights’). Common law rights arise when a trade mark is used to such an extent that a substantial reputation or goodwill is developed in the mark whereas statutory rights are obtained by registration of a trade mark.
Unauthorised use of a trade mark which is deceptively similar to a registered trade mark may amount to infringement where the infringer is liable for damages or an account of profits. It is not the responsibility of the Trade Marks Office to monitor infringement of your trade mark. Once your trade mark is registered it is your responsibility to protect it from infringement!
The question is: how can I monitor infringement of my trade mark?
- Australian Trade Mark Online Search System (ATMOSS)
Searching the ATMOSS database to ascertain whether a competitor has filed to register a trade mark that is the same or similar to your mark.
- World Intellectual Property Organisation Global Brand Database (WIPO)
You can perform a trade mark search through WIPO’s database to search for international trade marks registered under the Madrid System and conduct one search covering multiple sources at the same time. There is both a word and image function. The search does not cover trade marks filed directly outside the Madrid System.
- Google and Google Alerts
You can simply search for your trade mark online by typing it into the Google search bar.
Google is a very helpful tool for automated monitoring of your trade mark. ‘Google Alerts’ can notify you of the use of your brand name through sending you alerts. You will need to enter in specific terms related to your trade mark but overall it is still a very cost-effective way of monitoring your intellectual property.
- Marketplace search
Search engines (e.g. Google), business (ABN Lookup) and company names (ASIC), Yellow pages, True Local, and social networks such as Facebook, LinkedIn and Instagram
Third Party Services
There are third party services that can help you with regular automated searches for trade mark conflicts. These are known as trade mark watching services. A subscription to these websites will assist with protecting your trade mark portfolio, often worldwide.
Is it Trade Mark Infringement?
As the owner of your trade mark it becomes your responsibility to protect your intellectual property. If you suspect that an infringer is using your trade mark without your permission, you should seek professional advice to ascertain whether you have legitimate grounds to send an appropriate letter of demand or “cease and desist’ letter putting that person on notice of your rights.
Although you may find that someone is using your brand name when you search the databases, it is not always a clear cut question as to whether that is an infringing use. There may be no trade mark infringement if the use of the mark does not constitute infringement under trade mark law.
The Trade Marks Act outlines the circumstances in which a trade mark owner has a right to prosecute for trade mark infringement.
Take Away Points
- As a trade mark owner, you have the right and responsibility to protect it.
- You can manually monitor the use of your trade mark online by searching various databases.
- Subscribing to third party services who offer automated searches for any existing infringement of your trade marks will also help notify you of threats to your trade marks.
- Seek the assistance of a trade mark attorney to ensure the protection of your trade mark assets and to ascertain whether you have a legitimate case of trade mark infringement!
Jaclyn-Mae Floro, BCompSc
Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at firstname.lastname@example.org.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.