Safety Net your Business with a Registered Trade Mark
Why you need a Registered Trade Mark
There are very good reasons to obtain trade mark protection for your brand. Not the least of these is that a registered trade mark is a valid defence to allegations of trade mark infringement. Many small businesses take risks that would otherwise not have cost a lot to avoid. The process for obtaining a registered trade mark is relatively inexpensive and straightforward considering the potential cost of allegations of trade mark infringement and the problems that it can cause.
Section 120 of the Trade Marks Act 1995 (Cth)
The Act provides:
A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Section 120 specifies that in order to infringe the sign must be used as a trade mark. A defendant will often argue that the use of the trade mark has been descriptive or in a manner of “puffing” rather than as a distinguishing trade mark. This argument was unsuccessful in Mark Foy’s Ltd v Davies Co-op & Co Ltd (1956) 95 CLR 190 where the court observed:
But the Yeast-Vite case (1934) 51 RPC 110 does not assist the defendants. They are not using the words “Tub Happy” in the same way as the defendant was using the words “Yeast-Vite” in that case. They are advertising the words “Tub Happy” and emphasizing them in relation to their own cotton garments for the purpose of indicating a connection in the course of trade between the goods and themselves. The public are not being invited to compare the “Exacto” goods of the defendants with the “Tub Happy” goods of the plaintiff. They are being invited to purchase goods of the defendants which are to be distinguished from the goods of other traders partly because they are described as “Tub Happy” goods.
Receiving a “Cease and Desist” Letter
Trading online comes with the real risk of allegations of trade mark infringement because your business will become prominent to competitors through search engine results. It is not uncommon these days to be on the receiving end of a notice of infringement from a trade mark owner alleging trade mark infringement.
These letters are often coupled with allegations under the Competition and Consumer Act 2010 (Cth) that a business owner has engaged in:
- misleading and deceptive conduct, and
- made false representations as to affiliation or approval
The basis for these allegations is that the goods or services are of the same or similar type as those offered by the trade mark owner, have been supplied or are associated with the trade mark owner and originate from a business owner when the trade mark owner never gave such approval.
In addition, there may be allegations of “Passing Off” because the supply of goods or services are or will cause confusion or deception for consumers in the marketplace and would cause damage to the trade mark owner’s goodwill and reputation in the marketplace.
The remedies sought by a trade mark owner can include:
- orders for delivery of any products and materials that bear the mark
- orders for corrective advertising
- damages or an account of profits
- payment of legal costs
- payment of interest on damages or account of profit.
Before you launch your business online, you need to ensure that your trade mark does not infringe on an existing registered trade mark. Trade mark infringement can have serious repercussions for a business including going to court and expensive litigation fees.
It is easier and cheaper to protect your brand through a registered trade mark.
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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.