The internet has created a readily accessible global marketplace that sees international businesses being able to sell to Australian consumers from anywhere in the world. Enforcing trademark rights in Australia is possible. Learn how below.
If you own an Australian trademark, registration gives you the exclusive right to use that trademark in Australia in relation to particular goods and services. But what happens when a foreign competitor is promoting and selling goods or services to Australian consumers under the same, or a similar trademark?
This article explores trademark infringements we regularly see, the impacts of these infringements and insights into some of the avenues available when enforcing trademark rights.
The Impacts of Trademark Infringement
Regardless of the type of trademark infringement you experience, the impact on a business can be anywhere from minimal through to fatal. When an international brand uses your trademark, this can result in losses in revenue and potentially damage your business or product’s reputation in the market.
This is particularly true when a foreign company is selling an inferior product or service and the similar trademark they are using confuses consumers into thinking their goods or services are produced by or associated with your business.
The Good News
The upside is that there are avenues to enforce your trademark rights in Australia against foreign competitors or other parties that infringe any trademark you own.
As an example, the Courts in Australia have ruled that using an Australian-registered trademark on a website hosted outside of Australia, that sells products or services to Australia, can be considered trademark use in Australia. As a result, this is considered an infringement under the Trade Marks Act.
However this territorial-based protection means that enforcing rights across international borders can be complicated, especially with the global nature of e-commerce. So it is good to know that taking them to Court is not your only option.
Where to start
The very first step is to seek specialist advice from an intellectual property lawyer. While you may be thinking ‘of course you would say that because you are an IP lawyer’, know that it can be very hard and sometimes impossible, to undo negative situations when advice is sought later in the process.
When you come to us in these circumstances we review the viability of your dispute, and after discussing your options with you and how you wish to approach the infringement, we can send a ‘cease and desist’ letter. And if you wish, advise them of an intent to take them to Court. The wording of any cease and desist letter is vital, so ensure you don’t opt to do this yourself by copying samples of letters or using templates, as they are usually more problematic than helpful.
In the event that a cease and desist letter is ignored, there are other avenues available to you, depending on what it is you have trademarked.
Alternatives to Trademark Infringement Litigation
With the prohibitive costs of Court action, businesses will often need to look at more practical solutions for trademark infringements by a foreign company. Depending on the circumstances of the dispute, here are four alternatives to taking them to Court:
Remedies For Domain Name Disputes
If an overseas party is using a domain name similar to your trademark in Australia, it is possible to apply for the cancellation or transfer of the domain name. This can be done through the alternative dispute resolution mechanisms provided by auDA or ICANN. y. This application can be done without knowing the infringer’s precise identity and location and is a lot cheaper than Court action.
These proceedings are often finalised in a couple of months and are a very cost-efficient approach. Again, the best opportunity for a favourable outcome will come from seeking professional advice from an intellectual property specialist who is experienced in how to effectively file your application.
Report To The ACCC
Where an infringement contravenes Australian Consumer Law, which trademark infringement often does, and it is likely, or has the potential to, harm consumers or small business, we may explore the option of reporting the conduct to the Australian Competition and Consumer Commission (ACCC).
The ACCC can take a range of enforcement actions including issuing infringement notices, seeking Court enforceable undertakings or commencing legal proceedings. And as before, how this is approached will impact the likelihood of this being a successful avenue.
Lodge A Complaint Via Third Party Platforms
If the infringer is selling products via a third party platform such as Ebay, Amazon, Alibaba or Shopify, we can make use of the platform’s IP infringement policy.
In the US, there is legislation that provides online platforms with a “safe harbor” to incentivise them to implement notice-and-takedown policies. However, nearly all reputable online platforms will have some sort of IP protection policy. Amazon, for example, allows trademark owners to enrol their brands in the Amazon Brand Registry to locate and remove infringing content.
When these complaints are lodged with the assistance of an intellectual property lawyer, there is a heightened chance of your matter being dealt with effectively. Often the customer service teams on these platforms are inundated with enquiries so ensuring any complaint is worded effectively, can go a long way in getting your complaint dealt with promptly.
Lodge An Objection With Customs To Seize Goods
If an overseas party is selling counterfeit or infringing goods, we can lodge a notice of objection with the Australian Border Force requesting that they seize any goods being imported into Australia bearing the infringing trademark. This can be an effective way to stop the infringing goods before they are on the market.
Once the goods have been seized, the importer has 10 days to submit grounds for releasing the goods and if they fail to do so, the goods are automatically forfeited to Customs and destroyed. In the event they do submit grounds for releasing the goods, you will then need to commence legal action to keep the goods off the market. However, in our experience, many parties that are importing counterfeit goods will not want to engage in litigation and therefore do not object to the seizure.
It is also possible to file similar notices in other jurisdictions where you have a registered trademark. For example, China Customs has the power to seize IP-infringing goods being imported to or exported from, China.
Getting A Favourable Result
Australian Courts can award damages, including additional punitive damages, grant injunctions against the foreign business for continuing to supply Australian customers, as well as ordering the payment of legal fees.
However, taking them to Court is costly and can take years to finalise. It can also be hard to enforce a judgement against a foreign company, if for example, they do not pay the damages order or they do not have the funds to pay it.
If the initial cease and desist order is ignored, our clients are already aware of the resolution pathways available to them that take into account their circumstances and goals. Often we are able to collate sufficient information to demonstrate that the infringing party would be likely to be ordered to pay damages, if the matter was to end up in Court. Then we are in a good position to negotiate terms of the agreement and put an end to the matter for you.
Legally and tactically it is not wise to commence any communication or negotiation with the infringing competitor before seeking legal advice. We know that people often are frustrated and emotional when this occurs, however it is important to know that it is not uncommon for people to create larger problems by responding without legal advice.
It is harder to resolve issues when you have inadvertently jeopardised your strategic position at the start.
An IP lawyer will be able to give you good legal and strategic advice. When selecting a lawyer, choose someone who has experience on both sides of trademark disputes. When your lawyer is familiar with a range of options and defences, you will have access to a better strategy because they are familiar with the range of ways these disputes can play out.
You may also want to consider a lawyer who also has extensive litigation experience because, in the event you do choose to take an infringer to Court, you will want a highly experienced litigator in your corner.
Whatever path to resolution you choose, the best way to get to a time and cost effective resolution is to seek initial advice, become aware of your options, and get valuable insights into how your trademark issue is likely to play out for you and your business.
Related: Received a cease and desist letter? Read this article here.
As a boutique intellectual property firm servicing clients across Australia, we explore a range of proactive and cost effective measures to enforce your Australian trademark rights when they are infringed by an overseas competitor. We are Brigit Rubinstein and Zan Lee, intellectual property experts who specialise in trademark dispute resolution and litigation. Book a complimentary initial call to discuss your needs here.