Building a distinctive brand is exciting - but when someone rides on your reputation (or says you’re riding on theirs), it can quickly become stressful.
If you trade in Australia, understanding trade mark infringements will help you protect your name, logo and reputation, and avoid expensive disputes.
In this guide, we’ll explain what trade mark infringement is under Australian law, common examples and defences, practical steps to take if there’s a problem, and how to reduce your risk from day one.
What Is Trade Mark Infringement In Australia?
In Australia, trade mark rights mainly come from registering a trade mark under the Trade Marks Act 1995 (Cth). A registered trade mark gives you the exclusive right to use the mark as a “badge of origin” for the goods or services covered by your registration.
Someone may infringe your registered trade mark if they use a sign that is substantially identical or deceptively similar to your mark for the same or closely related goods or services. The key question is whether their use would likely cause consumers to be confused about commercial origin.
“Use” is broad. It includes putting a sign on products, packaging, websites, ads, social media, domain names, invoices, or even in Google Ads keywords if the use functions as a trade mark.
If you haven’t registered your mark, you may still have options under the common law tort of passing off and the Australian Consumer Law (ACL) for misleading or deceptive conduct. These claims can be powerful, but they’re usually harder and costlier to run than a straight trade mark infringement claim.
Registering your brand gives you a clearer and stronger position. If you haven’t done this yet, it’s worth considering a formal application to register your trade mark so you can enforce it with confidence.
How Do I Know If There’s Trade Mark Infringement?
If you suspect someone is using a similar name or logo, work through these quick checks.
1) Compare The Signs
Look at the overall impression of the two signs - not just side-by-side differences. Ask whether the other sign is substantially identical or deceptively similar to yours.
- Substantially identical: The main, essential features are the same.
- Deceptively similar: The resemblance is likely to cause confusion.
2) Check The Goods/Services And Channels
Do they use the sign for the same or closely related goods or services? Are you operating in the same channels (e.g. online retail, an app store, a specific professional service)? Overlap increases the risk of consumer confusion.
3) Confirm Your Rights
Do you hold a current Australian trade mark registration that covers the relevant classes for your goods/services? If yes, note the registration details and classes. Keeping on top of your trade mark renewal ensures your rights don’t lapse when you need them most.
4) Consider Use “As A Trade Mark”
The other party must be using the sign “as a trade mark” - that is, as a badge of origin. Purely descriptive or decorative uses may not infringe (more on defences below).
5) Gather Evidence
Save screenshots, dates and examples of use. Capture search engine results, product pages, ads and social media posts. Evidence will be crucial for any negotiation or legal steps.
Common Examples (And When It’s Not Infringement)
Not every lookalike is unlawful. Here are common scenarios and where the line is usually drawn.
Common Infringement Scenarios
- Near-identical brand names for the same products, e.g. “KATANA COFFEE” vs “KATANAA COFFEE” for café services.
- Similar logos used on closely related goods, where consumers would likely assume a connection.
- Using a competitor’s trade mark prominently in online ads or on a landing page to suggest affiliation.
- Rebranding to a name that overlaps with a registered mark in your industry after the owner has built up reputation.
Situations That May Not Be Infringement (Defences And Exceptions)
Australian law recognises several statutory defences and limits. Whether they apply depends on the facts:
- Descriptive use: Using terms to describe your goods/services rather than as a badge of origin (e.g. “gluten-free bakery”).
- Own name: Good faith use of your own personal name or (in some cases) your business name.
- Comparative advertising: Fair comparisons that don’t mislead consumers or use the mark as your brand.
- Prior continuous use: You used your mark before the registered owner’s first use (or filing date) and continued that use.
- Exhaustion/resale: Genuine second-hand resale of branded goods (without suggesting you’re the brand owner).
Even if a defence may apply, it’s wise to get tailored advice. Trade mark disputes can also overlap with ACL claims about consumer confusion - for a refresher on how those work, see the elements of misleading or deceptive conduct.
What Should I Do If Someone Infringes My Trade Mark?
Stay calm and work through a measured, commercial process. Shooting off aggressive emails can backfire - the goal is to stop the harm quickly and cost‑effectively.
Step 1: Verify The Facts And Your Rights
Confirm your registration (classes, status, owner name) and collect dated evidence of the other party’s use. Consider relevant defences that may be raised. A short consultation with an Intellectual Property Lawyer can help you quickly assess strength and strategy.
Step 2: Consider A Cease And Desist Letter
A well‑crafted letter sets out your rights and requests the other party to stop using the mark, with a reasonable deadline. It often proposes practical undertakings (e.g. removing infringing packaging within a set time). For tone, structure and timing, consult our guide to creating a Cease And Desist Letter.
Step 3: Negotiate A Commercial Resolution
Many disputes end with negotiated terms, such as:
- Rebrand timelines and sell‑through periods for existing stock.
- Geographic or channel‑based coexistence (if confusion can be avoided).
- Licensing the brand for limited uses via an IP Licence.
- Transferring the disputed mark/brand assets under an IP Assignment.
Choosing the right option is about balancing legal strength against commercial realities - speed, cost and reputational risk.
Step 4: Consider Formal Proceedings (If Needed)
If informal steps fail, formal options may include court proceedings seeking an injunction, damages or an account of profits, delivery up/destruction of infringing goods and costs. There can also be administrative routes (e.g. opposing or rectifying registrations) in some cases.
Court is a last resort for many small businesses, but sometimes it’s necessary to prevent serious harm or repeat infringement.
How Do I Avoid Infringing Someone Else’s Trade Mark?
Prevention is far cheaper than a rebrand. Build these checks into your brand development and marketing workflow.
1) Clear Your Brand Thoroughly
- Search the Australian trade marks database (including variations and phonetics).
- Check key domains and social handles.
- Look at marketplace listings, app stores and Google results in your category.
If a close result is already in your class for similar goods/services, reconsider early before you invest in packaging, signage and SEO.
2) Register Early And In The Right Classes
Registration gives you stronger, clearer rights. Think about where your brand will operate now and in the next 3-5 years, and file accordingly. If expansion is on the horizon, you can phase filings to manage budget while protecting your core now. When you’re ready, proceed to register your trade mark.
3) Use Your Brand Consistently
Use the mark as registered (and keep evidence of use). Consistency helps you defend the mark and show that others’ uses are confusing. When your mark is registered, you can use the ® symbol. Before registration, you can use TM to signal brand intention.
4) Train Your Team And Agencies
Provide simple guidelines for designers, marketers and resellers on what they can and can’t do with the brand - and how to reference competitors in ads without crossing the line.
5) Set Up Brand Monitoring
Keep an eye on new filings, marketplaces and social media. Early detection makes solutions easier and cheaper (e.g., a quick rebrand for a new seller before they scale).
What Remedies Are Available For Trade Mark Infringement?
Available remedies will depend on the facts, but typically include:
- Injunctions to stop the infringing use.
- Damages or an account of profits (handing over profits made from the infringement).
- Delivery up or destruction of infringing materials.
- Corrective notices or advertising (in some cases).
- Legal costs (often on a “costs follow the event” basis, subject to the court’s discretion).
As always, a pragmatic settlement can save time and money while still protecting your reputation and goodwill.
Coexistence, Licensing And Settlements: What’s Commercially Sensible?
Not every clash needs to end in a winner‑takes‑all outcome. If the risk of confusion can be managed, a coexistence arrangement might work - for example, each party using the mark in different markets or channels. Document any arrangement properly (and clearly) so expectations match reality.
Where there’s appetite to collaborate, a limited or conditional brand licence via an IP Licence can deliver value and control. If it makes more sense for one party to own the brand outright, an IP Assignment can transfer ownership cleanly as part of a broader settlement.
Passing Off And ACL Claims (If You Don’t Have A Registration)
If you don’t have a registered trade mark, you may still have options where another business has copied the “look and feel” of your brand or is leveraging your reputation.
- Passing off: Protects the reputation and goodwill you’ve built in your mark or get‑up (e.g., packaging, colourways, trade dress) where a misrepresentation causes damage.
- ACL s 18 (misleading or deceptive conduct): Prohibits conduct that misleads consumers. This can apply to lookalike brands and confusing marketing. More detail on the principles sits in our guide to misleading or deceptive conduct.
These claims often need more evidence (e.g., proof of reputation, consumer confusion, loss). That’s why registering your brand remains the simplest pathway to enforceable rights.
Practical Tips To Protect Your Brand (And Budget)
- Front‑load clearance searches before you fall in love with a name.
- File to protect your core name and logo; add further filings as you grow.
- Keep good records of brand use (dated screenshots, packaging, sales data).
- Respond early to potential conflicts with a polite but firm approach - a well‑timed Cease And Desist Letter can resolve most issues.
- Use written contracts for any brand sharing: a clear IP Licence or IP Assignment avoids ambiguity.
- Diary your renewal dates - missing a trade mark renewal can open the door to copycats.
- For any borderline or high‑stakes scenario, get targeted help from an Intellectual Property Lawyer.
Key Takeaways
- Trade mark infringement in Australia turns on whether a sign is substantially identical or deceptively similar to your registered mark for the same or related goods/services, causing likely confusion.
- If you don’t have a registration, you may rely on passing off and the ACL, but these routes are generally harder - registering your brand strengthens your position.
- Act methodically: verify your rights, gather evidence, and use a measured approach (often a cease and desist) before considering court.
- Commercial outcomes like coexistence, licensing or assignments can resolve disputes quickly while protecting your brand and budget.
- Reduce risk with proper clearance searches, timely filings, consistent brand use, team training and active monitoring.
- Early, tailored legal advice can save costs and prevent avoidable rebrands or litigation.
If you’d like a consultation about trade mark infringements in Australia, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no‑obligations chat.
