Responding to a trade mark infringement allegation
A trade mark infringement allegation creates urgent risks: injunctive relief, delivery up, and potential account of profits. The first 14 days often determine whether the matter settles or escalates to Federal Court proceedings.
This is an 8-step workflow for responding to a trade mark infringement letter of demand under the Trade Marks Act 1995 (Cth), covering the defences under ss 122-124, counter-claims, and negotiated outcomes.
Before you start
- Copy of the letter of demand and attachments
- Client's use of the sign (first use, volume, channels) documented
- Client's brand strategy and commercial tolerance for change clarified
- Preliminary conflict check against the complainant completed
The workflow
Acknowledge and preserve
Send a holding response within 48-72 hours acknowledging receipt without admissions. Issue a litigation hold internally and preserve marketing, packaging, and sales records.
Verify the complainant's rights
Search the Trade Marks Register for the complainant's registrations, review the specification of goods and services, and check for non-use vulnerability under s 92.
Assess infringement under s 120
Assess whether the client has used a sign as a trade mark, and whether the sign is substantially identical or deceptively similar in respect of the registered goods or services.
Identify defences
Identify available defences including good faith use of own name (s 122(1)(a)), descriptive use (s 122(1)(b)), prior continuous use (s 124), and comparative advertising (s 122(1)(d)).
Consider counter-claim for revocation
Consider a counter-application for removal for non-use under s 92 or for cancellation under s 88 if the registration is vulnerable. Advise on the strategic effect on any future proceedings.
Draft substantive response
Draft a substantive response within the deadline, stating defences relied on, any without prejudice position, and any proposed undertakings. Mark sensitive material “without prejudice save as to costs” where appropriate.
Negotiate a co-existence or settlement
Explore co-existence, geographic or channel limitations, phased transition, or a licence. Quantify the cost of rebranding versus ongoing royalty.
Prepare for Federal Court proceedings
If proceedings are threatened or commenced, prepare the client for interlocutory injunction risk, discovery, and quantum of damages or account of profits under s 126.
What you will have at the end
A measured response to a trade mark infringement allegation that preserves defences, identifies counter-claims, and positions the client for a negotiated or litigated outcome.
Common issues
- Admissions made in an early holding response
- Failure to identify non-use vulnerability in the complainant's registration
- Defences under s 122 missed where use is descriptive or in good faith
- Client continues using the sign without interim advice, increasing exposure
- Undertakings given too broadly and without geographic or temporal limits
Run this workflow on a real matter
Quillio analyses the letter of demand, cross-references the Trade Marks Register, identifies available defences and counter-claims, and drafts the response. See /practice-areas/commercial-lawyers or start a free trial.
This workflow is a general guide. Specific advice depends on the facts of use and the complainant's registration.
Try this workflow with Quillio.
Quillio can run this workflow on a real matter, with citations to current AU authority on every step. The free trial requires no credit card.
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