Is your Trade Mark being infringed?

Common Law Trade Mark

A trader becomes entitled to an unregistered mark by trading in goods or services identified by that mark in Australia, thereby generating goodwill in the business connected with the mark.

As the prior owner in the mark at common law, your commercial activities are likely to have caused you to obtain substantial and valuable goodwill and reputation attached to the trade mark and the associated brand in relation to goods and services generally, and more specifically, the geographical region in which the trade mark is used. 

In the event your mark is not registered with IP Australia, you will be permitted to continue using it if you were the first to use the mark, despite it being registered to another business. However, if you were not the first to use the mark, you may be at risk of a claim by the registered owner requiring you to “debrand” if they are using it for the same class of goods and services as you do.

If someone is using your unregistered trade mark, you will have two courses of action available to you:

1.     a claim in ‘passing off’; and/or

2.     a claim in ‘misleading and deceptive conduct’ pursuant to the Australian Consumer Law.

Passing Off

The traditional cause of action available to the proprietor of an unregistered trade mark is the common law tort of passing off. Passing off occurs when a party presents their goods and services as the goods or services of someone else. This action is based upon a proprietary right in the goodwill attached to your business. To establish such a claim, you must be able to prove that consumer deception is likely or has been a result of the passing off conduct.

Passing off is a misrepresentation made by a trader in the course of trade to prospective customers of his or her ultimate consumers which is calculated to injure the business or goodwill of another trader.

The three elements in a claim of passing off are:

1. the plaintiff possesses goodwill and reputation attached to the goods or services which he or she supplies;

2. a misrepresentation by the other party to the public, leading or likely to lead the public to believe that the goods or services offered by him or her are the goods or services of the plaintiff; and

3. the plaintiff suffers or is likely to suffer damage by reason of the defendant’s misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.

Misleading and Deceptive Conduct  

Conduct is misleading or deceptive, or likely to mislead or deceive, if it has a tendency to lead into error. That is to say there must be a sufficient causal link between the conduct and error on the part of persons exposed to it.

Section 18 of the Australian Consumer Law, which is found in schedule 2 of the Competition and Consumer Act 2010 (Cth), provides that:  

“(1)        A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”

The words ‘likely to mislead or deceive’ make it clear that it is not necessary to establish actual deception in order to invoke this provision. 

A plaintiff is entitled to seek an injunction as well as damages against a defendant in the event of a breach of this provision.

Get in touch with us today to find out whether your intellectual property rights are being infringed.