Trade mark infringement response checklist (AU)
A trade mark infringement letter can threaten a brand investment. This checklist helps lawyers assess the claim, preserve defences, and choose a response strategy.
This is a 12-step checklist for responding to a trade mark infringement allegation or letter of demand under the Trade Marks Act 1995 (Cth). It covers use analysis, defences, and strategy.
The checklist
Confirm the claim
Identify the registered mark, owner, registration number, and the specific alleged infringement.
Check register status
Confirm the asserted mark is registered, renewed, and within its term.
Compare marks and goods
Compare your use against the registered mark and classes actually registered.
Assess deceptive similarity
Assess whether the marks are substantially identical or deceptively similar.
Review defences
Review statutory defences including good faith, descriptive use, and prior use.
Check non-use and removal
Assess whether the registered mark is vulnerable to non-use removal.
Assess ACL overlay
Check whether misleading or deceptive conduct or passing off is pleaded alongside.
Preserve evidence
Preserve evidence of first use, sales, marketing, and customer recognition.
Consider without prejudice reply
Draft a reply that addresses the allegations without conceding infringement.
Review groundless threats
Assess whether the letter could be a groundless threat actionable under the Act.
Scope commercial options
Scope options including co-existence, rebrand, licence, or defend.
Diarise deadlines
Diarise every deadline in the letter and any related court or IP Australia matter.
When this checklist applies
Use when a client receives a trade mark letter of demand or cease-and-desist, or is preparing a defence in Federal Court proceedings.
Common pitfalls
- Responding before confirming the register status of the asserted mark
- Missing a groundless threats counterclaim
- Failing to preserve first-use evidence
- Treating co-existence as unavailable without scoping it
- Overlooking parallel misleading conduct claims
Run this checklist on a real matter
Quillio can compare marks, summarise defences, and draft a first response letter. See /practice-areas/intellectual-property or start a free trial.
General Australian trade mark guidance. Infringement analysis is fact-specific — confirm with a specialist before sending substantive correspondence.
Use this checklist on your matter.
Quillio can run this checklist on a specific NSW conveyancing matter — confirm each item, calculate adjustments, and generate the supporting documents. The free trial requires no credit card.
Start your free trial