A trademark infringement will occur through a competitor’s unauthorized exploitation of the trademark or of something that bears similarity to an existing trademark. The results can be very damaging to a business, including harm to goodwill and reputation and a consequent loss of business and profits. Legal action can be taken to prevent or stop trademark infringement or dilution, including action for common law passing off or actions under unfair trading legislation such as the Competition and Consumer Act 2010 (for more information, see our section titled “Passing Off”).
Litigation can however be very expensive and is heavily fact and evidence based. Going to Court over a trademark infringement can be an extremely stressful and a financially burdensome affair. For these reasons, and especially in circumstances where the aggrieved party is a small business with a limited legal budget, it is best to first try to resolve the dispute outside of the Court process through negotiations or alternative dispute resolution processes.
Navado Lawyers and Solicitors are aware of these commercial and legal realities, and we have made it our mission to provide affordable legal services to clients who require legal assistance for trademark matters. The first step that can be taken to attempt a resolution is the drafting and service of a letter of demand. If this is ineffective, ADR would ordinarily be the next step. If all else fails, it may be necessary to go to Court and engage in potentially protracted litigation.
Letter of Demand
The preliminary stage in attempting to resolve a trademark infringement involves the drafting and service of a letter of demand on the infringing party. Such a letter would ordinarily include the following terms:
- Identify the entitlement and right to the disputed trademark;
- Describe the details of the infringing conduct or activity, providing all relevant evidence;
- Assert the legal authority under which the infringement of trademark has taken place, such as the specific section or part of the relevant legislation;
- Provide a reasonable timeframe in which the infringing business or individual must to cease and desist; and
- Clearly state that if the demands in the letter are not complied with, the aggrieved party reserves its rights to pursue its claim at law.
Depending on the kind of trademark being infringed, the letter of demand may have to be appropriately amended to cover all relevant areas. Although there is no legal requirement for the issue of a letter of demand, it can nevertheless create important legal liabilities as the dispute goes to alternative dispute resolution or Court litigation. Accordingly, it is important to ensure that the letter is drafted properly, preferably by a solicitor who has experience in the field of trademark law.
ADR and Trademark Litigation
The Alternative Dispute Resolution processes (ADR), such a negotiation, mediation, conciliation or arbitration are significantly cheaper and less stressful than protracted litigation. The purpose of ADR is to create open dialogue between parties so that clear lines of communication can facilitate the resolution of any claims. In our experience, clients often find that this is a preferable way to resolve disputes. However ADR is not always successful. It fails where either or both parties refuse to talk, either party is acting unreasonably or is unwilling to co-operate in good faith. In such a situation, litigation may be the only way out. The kinds of remedies that might be open to an aggrieved party in trademark litigation could include:
- Injunctive relief, which prohibits the infringing party from continuing in its infringing activity;
- Interlocutory relief, which orders that alleged infringing activity must stop pending the determination of a substantive issues relating to the infringement; and
- Damages, which accounts for any loss suffered by an aggrieved party caused by trademark infringement.
It is our firm’s policy to try to resolve disputes in a manner that is most cost effective and efficient for our clients. If litigation becomes unavoidable, we will provide the appropriate legal guidance and Court representation that the circumstances of a client’s case require. For more information, see our “Civil & Commercial Litigation” legal practice area.
If you require assistance with a trademark dispute and/or a trademark infringement, you should make an appointment to see one of our Intellectual Property Solicitors. We will usually see you in our Sydney CBD Head Office or otherwise will see you in one of our branch offices. To view a complete list of our branch offices, please peruse the "Locations" tab or contact our main office line on (02) 9233 4048 or email firstname.lastname@example.org.
This webpage (and any material or wording appearing on this webpage) is provided for general information purposes only and does not constitute any Legal Advice. It does not take into account your objectives, your instructions or all of the relevant facts and/or circumstances. Navado accepts no responsibility to any person who relies on the information provided on this website. We further refer you to our Disclaimer.
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If you require assistance with a Intellectual Property matter, you should make an appointment to see one of our Lawyers in one of the following locations:
- Intellectual Property Lawyer Sydney
- Trademarks Lawyer Sydney
- Intellectual Property Lawyer Parramatta
- Trademarks Lawyer Parramatta
- Intellectual Property Lawyer North Sydney
- Trademarks Lawyer North Sydney
- Intellectual Property Lawyer Hurstville
- Trademarks Lawyer Hurstville
- Intellectual Property Lawyer Liverpool
- Trademarks Lawyer Liverpool
- Intellectual Property Lawyer Gordon
- Trademarks Lawyer Gordon
- Intellectual Property Lawyer Baulkham Hills
- Trademarks Lawyer Baulkham Hills
- Intellectual Property Lawyer Campbelltown
- Trademarks Lawyer Campbelltown
- Intellectual Property Lawyer Bondi Junction
- Trademarks Lawyer Bondi Junction
- Intellectual Property Lawyer Chatswood
- Trademarks Lawyer Chatswood
- Intellectual Property Lawyer Miranda
- Trademarks Lawyer Miranda
- Intellectual Property Lawyer Bella Vista
- Trademarks Lawyer Bella Vista
- Intellectual Property Lawyer Erina
- Trademarks Lawyer Erina