Advanced trade marks: enforcement

This webinar is hosted by Liam, Elise and Vee.

Liam:
Hi everyone. Welcome to today’s session on trade mark enforcement. My name's Liam. I'm from the Communications and Experience team here at IP Australia.

Elise:
Hi everyone, my name is Elise.

Vee:
And I’m Vee.

Elise:
And we’ll be your hosts for today’s session. As Liam mentioned, the focus of our webinar today is trade mark enforcement.

Vee:
Enforcement is a crucial step in your trade mark strategy. The effective protection and enforcement of your registered trade mark right is a critical step in maintaining its value, deterring potential infringement, and building your brand's distinct reputation.

Elise:
Today’s webinar is not an introductory session. The advanced content we discuss assumes that you have already attended our Understanding Trade Marks or Trade Marks 101 webinars, or that you otherwise have a good base understanding of trade mark law in Australia.

If you haven’t yet participated in one of our introductory webinars, you don’t necessarily need to leave this session, but it might be helpful to go back and review those webinars after we finish up today.

The specific focus of today’s webinar is:
What trade mark enforcement is
IP Australia’s role in enforcement
Your individual role in trade mark enforcement and what actions you can take
The role of attorneys and the court in enforcement matters
We will specifically look at Cease & Desist letters and potential courses of actions to them
And we’ll briefly touch on enforcement in jurisdictions outside of Australia.

Vee:
We have a broad definition of enforcement on the screen, but what does enforcement mean in the context of protecting IP rights and specifically trade marks?

When you apply for and subsequently gain registration of your trade mark in Australia, this gives you, the owner, the exclusive right to use, license and sell the trade mark. If you see that someone else in the marketplace is using, or attempting to use your trademark without your permission, it’s important that you're aware of the actions that available to you.

Taking these actions can prevent someone from using your trade mark without your permission in a way that could be confused with you and your goods or services. One of the benefits of registering your trade mark is that it makes it easier for you to establish your ownership and enforce the rights you have in your brand.

Elise:
Protecting your trade mark, including developing enforcement strategies is the owners', or your responsibility. IP rights are most effective when they are protected as part of an enforcement strategy.

An enforcement or infringement strategy is not simply an intention to commence legal proceedings when you believe your IP rights are being infringed. It can include several things, such as monitoring the marketplace that you operate in and a basic plan for how you wish to resolve issues as they arise.

It's also important to be mindful of the IP rights of others when conceiving new branding ideas, so as to ensure that you are not encroaching on someone else rights.

If someone is using your registered trade mark, or something very close to it, on the same goods or services that you have protection for, then they may be infringing on your intellectual property. Of course you may not have a problem with certain actions by others in the marketplace, such as customers referring to your branding in a positive review, or if you have commercialised your trade mark and have given permission to certain parties to use your trade mark via licensing or franchising agreements.

It's important to think about what kinds of use by others you would have a problem with ahead of time when creating your infringement strategy.

Vee:
As the owner of intellectual property rights, it’s your responsibility to ensure you protect your right. It’s a common misconception that IP Australia can stop others from infringing on your registered trade mark. This is not the case and it is not within our remit to police your rights or launch legal proceedings on your behalf.

While IP Australia’s role includes maintaining the register of trade marks, we do not police trade marks or enforce your rights beyond raising pre-existing trade marks as a barrier to later filed trade mark applications.

This means that if someone else applies for a similar trade mark on similar goods and services, it is our responsibility to raise pre-existing registered trade marks as a barrier to later-filed applications. These barriers must be overcome, if the later-filed application is to proceed to acceptance and registration.

If you feel that IP Australia has accepted or registered a trade mark in error, then there are potential avenues for redress though IP Australia’s Oppositions and Hearings team. However, these concerns must be raised by you and any concerns must be dealt with within the legislated timeframes.

Details on the opposition process were covered in our previous webinar in August which you can find on our website. Again, we do not arbitrate infringement matters from the marketplace and any further activity to avoid other marks becoming registered must be initiated by you.

Elise:
What we’ve just described is the role IP Australia plays in the process of protecting IP rights and the ways our systems can be engaged to support the enforcement process. As we've covered, IP Australia maintains the register, provides information and guidance as appropriate and when requested, provides dispute pathways for matters on whether marks should be allowed on or to remain on the register. Ultimately the responsibility for maintaining the value of your trade mark remains yours. So, let's have a look at some actions you may want to think about.

You may wish to consider which infringement actions others take that you might have an issue with. This is just one step in the development of an infringement strategy. An infringement strategy involves having a plan for monitoring your own intellectual property, how you’ll identify third party uses of your mark or a similar marks, what types of uses by third parties you have a problem with, and how you would go about to responding to that kind of use.

In order to enjoy the full benefits that owning a registered trade mark gives you, it’s important that the creation of your infringement strategy is not neglected as many of the suggested actions relies on your own due diligence.

Lee:
When developing your infringement strategy, you may wish to consider record keeping. It's important to keep track of what IP you have, if you’re licensing it out or allowing people to use it, and if you're doing so, who you're licensing it to and how you're controlling who uses it? It’s important that you keep your e-services account details and the address for service for any trade mark registrations you have up to date, so that you don’t miss any correspondence about renewals or third-party acceptances. You should also keep track of anyone else’s IP you have permission to use.

What proactive actions can you take to avoid others infringing upon your rights in the first place? You can use the R symbol next to any registered trade marks you own to flag to others that you have registered the mark. You can also use watermarks or other physical and digital security means to make it harder for others to copy.

Detection methods. You should think about how you’re going to monitor what third parties are doing. In the marketplace, you should be periodically reviewing the products and advertising of competitors to look for any signs of infringement. If you are working in an online environment, data ‘seeding’ can help identifying any misuse of your IP. You should also regularly keep an eye on the trade marks register and journal, to see if any marks you're concerned about have been recently applied for and accepted. This will put you in a good position to oppose these registrations if you want to.

Selective enforcement. Taking enforcement action can end up being expensive and time consuming. You should define a process to identify who you would bring action against, what kind of usage would concern you, and what level of action would be appropriate to the infringement. For example, it may not be economical to pursue legal action against people using a similar mark but in a different industry, as consumers aren’t likely to be confused. Or it might not be worthwhile, perhaps even bad marketing to pursue action against someone who uses your trade mark to identify you in a positive review of your product.

But if someone in the same industry as you is using your branding on their new products, or suggesting you have endorsed what they do, that may be worth taking action over.

What is your budget? Legal proceedings can be expensive. Consider the value of your IP and compare this with the benefits you would gain from taking legal action. You should also decide on what level of action you can reasonably afford to take.

Finally, it's important to create clear goals. The type of action you take should depend on the nature of the infringement. Examples include obtaining injunctions, recovering damages, or deterring infringement through publicity. You should assess how far you can go to protect your IP and the likely outcomes for taking action.

Elise:
As Vee just mentioned, marketplace detection is crucial. As part of your usual business practice you should be doing routine checks of what your competitors and consumers are making, selling, advertising, reviewing, and buying. Google searches and use of search engine analytics, as well as any social media platforms that are in common use to promote business within your industry, is a good place to start. This will enable you to monitor if there is any use of your trade mark on your protected goods and services that you have previously identified in your infringement strategy.

Some trade mark owners like to employ the use of a 3rd party trade mark monitoring service who will conduct these searches on your behalf. Some of these services use special software that searches for and detects similar trademarks on a regular basis. There are many IP firms that provide this service, in addition to businesses that solely focus on trade mark monitoring.

Whether you are monitoring the marketplace yourself or employing someone else to do this for you, it's important that this is done on a regular basis.

Vee also touched upon monitoring IP Australia's register. One important consideration for any infringement strategy is keeping an eye on what third parties are applying to have registered on the Trade Mark Register. The Trade Mark Register is publicly accessible and searchable. You can keep an eye on which marks have been applied for, accepted, and registered here.

There are a few options to help you keep track of this if you need assistance. If you know of a specific application or registration you’re interested in following, our TMApp that you can download has a tracking option for specific numbers. You can also enlist the help of trade mark attorneys or the aforementioned searching companies to monitor the register on your behalf.

Vee:
However, you decide to go about keeping an eye on the register, it can be helpful to be aware of what the different marks statuses mean.

For example, if a mark you're concerned about has the status Accepted: Awaiting Advertisement, this will be a good point to prepare any opposition documents if you're thinking of opposing the trade mark's acceptance as part of your enforcement strategy.

Please note, that if your mark was raised as a barrier to acceptance against another application under s44, and they manage to overcome the issue by providing evidence of use or through other circumstances, we do send you a letter indicating that this has occurred. This is called a 3rd party acceptance letter. While it is not an invitation to oppose, it is something that you can be aware of and consider. This is, as mentioned earlier, another good reason to keep your e-Service account and address for service details up to date. Doing so helps to ensure you don’t miss any correspondence like this.

Elise:
Now that we've covered some potential strategies to consider as part of your enforcement plan, let’s cover some common scenarios that you may experience outside of our office.

So what is a Cease and Desist letter, or a Letter of Demand? This a letter that may require you to stop using or remove different products or advertising which the issuer believes is allegedly infringing their IP.

It's important to restate that proving infringement is an important issue that should be considered before taking legal action. It is crucial to know what rights you have, what remedies are open to you, and the cost and likelihood of success.  Making an unfounded claim of IP infringement is legally prohibited and may result in liability for damages.

While IP Australia does not specifically assist or provide legal advice in relation to Cease and Desist letters, there are some factors to consider in the event you do receive or are considering issuing one.

Firstly, time is of the essence in relation to Cease and Desist letters. Sometimes there will be a deadline associated with these letters for when a response or action will be requested from you. 

A Cease and Desist letter may in some instances detail the trade mark and trade mark number that is allegedly being infringed upon. This is why it's important to check the status and details of the trade mark listed on IP Australia's register. Here you can see what the status of the mark is and check if the trade is already registered, if the mark is still pending or under examination, or within the advertised opposition time frame. This will assist you in knowing what options you may have if you wish to challenge the trade mark’s registrability.

The Cease and Desist letter may also not state that “this is a cease and desist letter” – it may have similar wording like “Letter of demand” or “use of trade marks”.

Other things to consider are ensuring that the letter is directed towards your business, and that it has reached the correct person to handle legal matters. If you are not the correct person within the organisation, then it may be important to take note of the date when you received the letter and to ensure that the appropriate person within the organisation receives the letter as soon as possible. It may be worth developing a strategy on how you will handle a potential cease and desist letter in the future as part of your overall protection strategy.

It’s also important to understand and consider what the letter is asking of you . That is, what action are you being asked to cease or stop? Or you may need further information from the issuer of the Cease and Desist letter. The specific circumstance of each case and the type of method or option to take regarding the next steps will best come from the advice of an IP professional and not from IP Australia.

To reiterate once more, there may be legal ramifications for sending a Cease and Desist letter and making an unfounded claim for trade marks infringement. Again, it may be important to consult with an IP professional prior to taking legal action.

Vee:
So, with everything we’ve said so far in mind, at what point do you get attorneys and the courts involved?

In terms of the courts, decisions made by the Registrar with regards to what goes on or remains on the register can be appealed to the Federal Court or the Federal Circuit Court. You can also take other trade mark enforcement and infringement matters directly to Federal Court, Federal Circuit Court or the Supreme Court of each state and territory. If you’re taking the step of going to these courts, it’s a good idea to seek legal advice and you should ensure you have sufficient standing to be heard, as parties generally need to be directly affected by a matter to bring it before these courts.

If you do go to court, it can be a good idea to let IP Australia know. You or your representative can send in 3rd party correspondence via our online services platform in relation to any trade mark, even ones that you do not own. This means that IP Australia can work with the courts to ensure that they're aware of the Registrar’s procedural requirements and can help to ensure that decisions do not need to be re-issued due to administrative error.

You can seek the assistance of an attorney at any time and whether you do really depends on how much help you think you'll need and what steps you’re planning on taking. Here at IP Australia, we can’t provide you with advice. The most we can do is give you information about your options. So, if you need more guidance and assistance choosing the best path for you, that’s where you may want to seek the assistance of an attorney.

If you need help finding an appropriate attorney, there are a few places you can go. You can look up the website for The Institute of Patent and Trade Mark Attorneys of Australia or IPTA. IPTA is the representative body for Australian patent and trade mark attorneys and they provide a 'Find an Attorney' service on their website.

You can also look up the Trans-Tasman IP Attorneys Board. They're a statutory body that is responsible for administering the regulatory and disciplinary regimes for patent and trade mark attorneys in Australia and New Zealand. Before you consider taking a matter directly to Court you may be asked or advised to consider Alternative Dispute Resolution or ADR. ADR usually takes place before a matter goes to court and in some cases ADR may be court-directed.

ADR provides flexibility and is designed to help parties resolve disputes without going through expensive litigation. Trade mark disputes can be complex and involve technical matters and multiple jurisdictions. Through ADR, participants can set the rules and conditions that best meet their circumstances. This could include the appointment of an appropriate subject matter expert, and the procedures around the ADR process. You can view different types of ADR processes on our website.

Vee:
As you may already know an Australian trade mark provides protection only within Australia. As such you will need to take additional steps to secure and enforce your rights if trading overseas.

Firstly, it’s important to identify which international jurisdictions you will be seeking to protect and enforce your brand in. This is because each jurisdiction has its own procedures for the registration and protection of IP rights.

You may also want to plan which countries you want protection in now and which countries you may want to expand into and seek protection in the near future. Again, it’s important to know the IP procedures for these countries as there may be specific requirements for when you need to start using your trade mark on the goods and services in that jurisdiction. And they also have requirements for particular enforceability of IP in those countries. For example unlike Australia, countries such as China and Japan operate under a ‘first-to-file’ system, meaning the date on which you lodge your application is critical.

'First-to-file' means the registration is granted to a person who has first filed an application, when an application for similar or identical trademark is filed, regardless of whether the trademark has been used previously.

If you do decide to file in other countries you can do this either via application directly to each country or via a single international application filed through the World Intellectual Property Organization or WIPO, nominating the Madrid Protocol countries in which protection is sought. More information on the Madrid protocol, how to file, and which countries you may file with, can be found on our website.

Whichever option you chose, we recommend that you seek advice from an intellectual property professional before you file overseas.

With this in mind it may be prudent to engage the services of a law firm within that particular jurisdiction, or you may wish to engage an Australian law firm /trade mark attorney that has satellite offices in other jurisdictions or the ability to engage the services of a foreign associate on your behalf.

Elise:
You should also monitor international goods that are being imported into Australia as part of your international enforcement strategy. If you believe that your registered trade mark is being used on goods or products that your registered mart has claimed, you can request that the Australian Border Force prevents these infringing goods from being imported into Australia.

This is a temporary provision designed to stop the unauthorised importation and distribution of goods. This measure allows you time to seek a court order to permanently prevent importation of these goods.

An Australian Border Force notification should only be exercised when you are reasonably confident that there has been an infringement. You should also be prepared to cover the costs of proceeding to court action.

For more details on what happens when you lodge a request to the Australian Border Force, please refer to our website.

And that’s everything that we had prepared for you today. We hope this has been helpful for you in gaining a clearer sense of how to begin creating your own enforcement strategy.

Liam:
Thank you both very much for taking the time to present enforcement for trade marks.