Trade Mark Infringement & Enforcement

Trade Mark Infringement & Enforcement

Whether your trade mark is registered or not, defending and protecting it well is crucial to your business.  Our award-winning trade mark lawyers are internationally regarded and highly experienced, giving you piece of mind and expert advice.

Infringement of unregistered (reputation-based) trade marks

In Australia, New Zealand and other common law countries, extensive use of a trade mark generates rights which are enforceable, even if the mark is not registered.

However, there are disadvantages in relying on common law protection of trade marks. Court action can be protracted and uncertain. And reputation rights are limited geographically to where a reputation has been developed. Also, in many overseas countries, use-based rights are not recognised for trade mark ownership, so the first party to seek registration gets priority.

Ready to defend and protect reputation-based marks

If a conflict does arise over a reputation-based trade mark, Davies Collison Cave has extensive experience in:

  • Handling pre-litigation disputes involving enforcement of your rights
  • Defending allegations made against you
  • Litigating defence and infringement matters before the courts
  • Developing risk management strategies for your trade mark use.

Disputes about registered trade marks

Oppositions during the registration phase

The trade mark registration process incorporates an unavoidable opposition phase. If conflicts are encountered during the registration process you will be in good hands as we have proven expertise and a high success rate in handling trade mark oppositions.

Infringement of registered trade marks

For enforcement purposes, the key advantage of registration is that the rights arise from the registration itself, not from any reputation attached to the mark. Even trade marks that have not been used can be protected and marks that have been used only in one part of the country are protected nationally. Our intellectual property law group handles trade mark infringement matters with the cost-efficiencies, focus and experience that only a specialist IP practice can provide (see below).

Australian Customs Service

Davies Collison Cave has considerable experience in recording trade mark registrations with the Australian Customs Service. So products bearing infringing trade marks can be seized at the point of entry into Australia. The vast majority of such products are voluntarily forfeited by the importer, but if a dispute arises, we can assist.