How to Enforce Your Trade Mark in Australia

Registering your trade mark protects your brand and creates enforceable intellectual property rights. Once registered, you can use, license, or sell your trade mark with confidence, and control how others use it in Australia and overseas.

Trade mark rights can hold significant commercial value when they are actively monitored and defended. Trade mark enforcement prevents competitors from capitalising on your reputation and preserves brand value longterm.

Inaction, on the other hand, can dilute your brand identity, erode your hard earned goodwill, and weaken protection over time. This article explains the key strategies and practical steps to enforce your trade mark rights effectively in Australia.

Why Enforcement Matters

A registered trade mark is not self-enforcing, IP Australia grants the registration, but it does not police unauthorised use by other traders. That responsibility lies with the trade mark owner. The downsides of inaction are:

• Infringers may capture part of your market share.
  
• Consumers may be misled into believing counterfeit or imitation products are connected to you.
  
• Courts may interpret inaction as acquiescence, which can weaken your position in future disputes.

Therefore, the real value in a trade mark is only as strong as the trade mark owner’s willingness to defend it.

Here is what you need to know and do:

1. Monitor the Market

Enforcement begins with vigilance. You cannot act against an infringement you do not know about.

An effective enforcement strategy starts with consistent brand monitoring:

• Trade mark watching services track new filings in Australia and overseas, alerting you quickly to potentially conflicting applications before they proceed to registration.
• Online brand and marketplace monitoring involves keeping an eye on e-commerce platforms, app stores, and social media, where unauthorised sellers or copycat products often appear first.
• Customer and partner feedback is another valuable source of information, as clients and distributors frequently notice confusingly similar brands in the marketplace and can provide early warnings of possible infringement.

Without active monitoring, infringements can go undetected until they cause real harm. By the time you notice, market share may be lost, reputation damaged, and your legal position weakened. Delayed reaction from the trade mark owner makes enforcement more difficult and costly, while early detection allows swift, proportionate action to stop misuse before it escalates. ‍

2. Identify Trade Mark Infringement

Under the Trade Marks Act 1995 (Cth), infringement occurs when someone uses:

• A sign that is substantially identical or deceptively similar to your registered mark;
  
• In relation to the same or closely related goods or services;
  
• Without your authorisation.

Courts assess similarity based on sight, sound, and meaning, viewed through the lens of an ordinary consumer with imperfect recollection.

Common examples of trade mark infringement includes:

• Competitors using your logo or slogan in marketing.
• Importers selling counterfeit versions of your product in Australia.
• Imitative product names, such as “Coca Kola” for soft drinks.
• Similar logos, such as a sports shoe brand using a tick that mirrors Nike’s Swoosh.
• Deceptive domain names like “gooogIe.com” (with additional “o”), designed to mislead users.
• Fake social media profiles pages pretending to be official brand accounts to sell counterfeits.
• Borrowed taglines using phrases like “Just Do It Now” to exploit a famous slogan’s recognition.

However, not every situation amounts to infringement. The outcome often depends on interpretation. Certain honest practices, such as comparative advertising, honest concurrent use, or descriptive use may constitute valid defences to an infringement action. It is, therefore, essential to seek professional legal advice before taking any enforcement action.

3. Gather Evidence

Solid evidence is the backbone of any enforcement strategy. Before taking any action, it is essential to collect and preserve documentation that clearly shows the infringing use. A well-documented evidence file strengthens your position, enables your IP lawyer to assess the best course of action, and can make the difference between a successful enforcement outcome and a weak or unsuccessful claim.

Key evidence may include:

• Screenshots of websites, social media posts, online stores or online ads.
  
• Purchase receipts for infringing goods.
  
• Photographs of packaging, signage, or promotional materials.
  
• Customer or distributor statements describing confusion or unauthorised use
  

It is recommended to record the date and source of each piece of evidence to ensure that it is credible and admissible if legal proceedings become necessary. The quality of evidence has a decisive impact on the outcome of the matter and should not be overlooked.

4. Cease and Desist Letter

The first step in enforcement is usually to issue a formal cease-and-desist letter. This letter notifies the infringer of your trade mark rights, outlines how their actions may constitute a breach, and demands that the infringing conduct cease immediately, accompanied by appropriate undertakings to prevent future misuse.

With the availability of online templates and AI tools, it has become easy to draft what may appear to be a convincing infringement letter. However, it is strongly recommended to seek proper legal advice before sending any correspondence. Poorly worded or premature letters can undermine your legal position, reveal strategic weaknesses, or even expose you to unnecessary liability.

A well-drafted letter should:

• Identify your registered trade mark and scope of protection.
  
• Describe the infringing conduct with supporting evidence.
  
• Identify the legal basis for your allegations
  
• Demand that the conduct cease by a specific deadline.
  
• Reserve your right to claim damages and legal costs.

Most trade mark disputes may be resolved at the correspondence stage. However, it is crucial that such letters are drafted with care and precision. A poorly worded or overly aggressive letter may backfire and expose the sender to a claim of “unjustified threats” under Australian law.

To avoid these pitfalls, obtaining professional legal review before sending a letter is strongly recommended, as it ensures your position is both legally sound and strategically effective.

5. Court Proceedings

If informal resolution proves unsuccessful, litigation may become necessary. Commencing proceedings before the Federal Court of Australia can enable a strong authority to enforce your rights by providing powerful remedies, including:

• Injunctions – Court orders halting further infringement.
  
• Damages – Compensation for loss of sales or reputation.
  
• Account of profits – Recovery of the infringer’s gains from misuse.
  
• Delivery up or destruction – Removal of infringing stock from the market.

Although court action can be complex and expensive, it is sometimes the only way to effectively protect your brand’s value and reputation. Any decision to proceed should be carefully weighed against the commercial realities, the importance of the brand, the scale of the infringement, and the potential impact on your business.

6. Preventive Strategies

You may prevent enforcement action by setting our preventive strategies. For instance,  a proactive brand protection strategy may minimise the risk of costly disputes later on.

A few simple but strategic steps can significantly strengthen your position:

• Register early and broadly. File trade marks that cover all goods and services you currently offer, as well as those you plan to expand into. Early and comprehensive protection helps prevent competitors from securing rights that could limit your future growth.

• Maintain evidence of use. Keep records showing genuine use of your trade mark, such as marketing materials, invoices, or website screenshots. This evidence not only supports enforcement but also protects your registration from removal for non-use.

• Educate your team. Your staff are often the first to notice unusual activity, such as look-alike branding or suspicious online listings. Regular training ensures they know what to look for and how to report potential issues.

• Budget for IP management. Treat trade mark maintenance as an ongoing investment. Allocate funds for monitoring, renewals, and enforcement so that issues can be addressed promptly without financial hesitation.

By taking these steps, you make enforcement faster, less expensive, and more effective, allowing your brand to stay strong and competitive over time. Reach out to us if you would like to consider training your team.

Set yourself up for success

Owning a registered trade mark is only the beginning of brand protection. The real strength lies in vigilance and timely enforcement action. Reach out to our expert advisors to define and apply your IP strategies now and for the future.

Whatever your scale, the principle remains the same: active enforcement preserves brand value and ensures your trade mark remains a powerful business asset.

If you suspect infringement, seek legal advice as soon as possible. Taking prompt action is far more powerful and cost-efficient than trying to fix the damage afterwards.