Section 120
Three ways a registered mark is infringed
Section 120 sets out infringement in widening circles. Each one is about using a sign “as a trade mark” that is substantially identical with, or deceptively similar to, the registered mark.
- 120(1): the registered goods or servicesUsing the sign for goods or services the mark is registered for.
- 120(2): goods and services that are closeUsing it for goods of the same description as the registered goods, services closely related to them, services of the same description as the registered services, or goods closely related to those. Here the person is not taken to have infringed if they establish that using the sign as they did “is not likely to deceive or cause confusion.”
- 120(3): well-known marksWhere the mark is well known in Australia, using the sign for unrelated goods or services infringes where, because the mark is well known, the sign “would be likely to be taken as indicating a connection” between those goods or services and the registered owner, and the owner’s interests are likely to be adversely affected for that reason. Whether a mark is well known takes account of how far it is known within the relevant sector of the public (section 120(4)).
Section 122 says that, in spite of section 120, a person does not infringe a registered trade mark when, among other cases, they use in good faith their own name or the name of their place of business, use a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of goods or services, or use the trade mark for comparative advertising. Sections 122A, 123 and 124 set out further uses that do not infringe.
Section 120 is about registered marks. That is the practical point of the gap this site is about: IP Australia says a business name registration gives no exclusive rights to the name, while a registered trade mark puts its owner in a strong position to stop others using it.
Before acting
What IP Australia says to check first
IP Australia acknowledges it can be stressful to see your IP used without permission, and says it’s important to make sure the right is actually being infringed. Its checks, in order:
- The right is yours, and in force. You need to prove you are the rightful owner or entitled to act for them, with documents including a transfer of title if ownership was transferred, and that the right is still in force. A registration that has lapsed for want of renewal no longer protects the mark; renewal is in what a registered trade mark gives you.
- It really is infringement. For trade marks, IP Australia says you’ll need to prove the other mark is being used on the same or similar goods or services registered to yours, and is sufficiently similar to cause confusion about the product’s origin.
- They don’t have permission. You’ll need to prove the other person has no permission to use the IP; records of licences and approvals given to others help show who does.
- They haven’t registered it themselves. IP Australia suggests searching the register to check the other person doesn’t hold registered rights, and if they have registered or applied, you may wish to challenge their right.
Two cautions sit beside those checks. Only the owner of an IP right, or someone entitled to act for them, can start infringement proceedings. And a false claim has its own cost: IP Australia says that if you make a false claim, you could be liable for damages.
The options
From a letter to a court
Legal advice
Before any action, IP Australia suggests considering legal advice specific to your situation, so you know what rights you have, what remedies are open, and the cost and likelihood of success.
A letter of demand
IP Australia says a letter of demand can be an effective way to stop infringing behaviour and avoid legal action. It lists what an effective letter does: identifies your ownership of the right and entitlement to make demands; documents the infringing conduct, with written examples if possible; names the legislation being infringed; gives a specific timeframe to stop, return infringing property and provide information to calculate a compensation claim; and states that legal proceedings will follow without further notice if the demands aren’t met. It also warns that a letter can give the other side time to hide or destroy evidence, which is why going to court without notice may sometimes be preferred.
Alternative dispute resolution
Mediation, arbitration and expert determination let parties settle a dispute without litigation. Among the resources IP Australia names is the Australian Small Business and Family Enterprise Ombudsman, which gives small businesses information about dispute resolution options and access to mediation.
Court
If you’re sure the other party has no permission to use the IP, IP Australia says you may wish to escalate to court. Section 20(2) of the Act gives a registered owner the right to obtain relief under the Act if the mark is infringed.
Goods and platforms
Counterfeits, imports and online listings
Where goods are being imported that infringe your rights, IP Australia says you can lodge a notice of objection with the Australian Border Force, which gives it authority to temporarily seize suspected infringing goods. For online selling, it says some platforms invite owners to add trade marks to a brand registry, and suggests listing rights with platforms before anyone tries to sell counterfeits.
Prevention runs through all of this. IP Australia calls market monitoring “a key part of managing your IP,” and the register itself is part of the watch, as searching before you choose a name describes. A registered owner can also label the mark with the ®, covered in the ® and ™ symbols.