Trade mark disputes and protection

Whether registered or not, Davies Collison Cave can help you defend and protect your trade mark should dispute arise regarding its registration, use or infringement by others.

Infringement of unregistered (reputation-based) trade marks

In Australia and other common law countries, extensive use of a trade mark generates rights which are enforceable by way of an action for breach of consumer protection legislation and passing off, even if the mark is not registered.

There are disadvantages to relying on common law protection of trade marks rather than registration: court actions can be protracted and uncertain, and reputation rights are limited geographically to where a reputation has been developed. Also, in many overseas countries, use-based rights are not recognised for trade mark ownership purposes so the first party to seek registration gets priority.

Ready to defend and protect reputation-based marks

However if a conflict does arise regarding a reputation-based trade mark, Davies Collison Cave has extensive experience:

• handling pre-litigation disputes involving enforcement of your rights;
• defending allegations made against you;
• litigating defence and infringement matters before the Courts;
• developing risk management strategies in relation to your trade mark use.

Disputes about registered trade marks

Oppositions during registration

The trade mark registration process incorporates an unavoidable opposition phase. If conflicts are encountered during the registration process you will be in good hands as we have proven expertise and a high success rate in handling trade mark oppositions.

Infringement of registered trade marks

For enforcement purposes, the key advantage of registration is that the rights arise from the registration itself, not from any reputation attached to the mark. Even trade marks that have not been used can be protected and marks that have been used only in one part of the country are protected nationally. Our intellectual property law group handles trade mark infringement matters with the cost-efficiencies, focus and experience that only a specisalised IP practice can provide.

Australian Customs Service

Davies Collison Cave have considerable experience in recording trade mark registrations with the Australian Customs Service, so that products bearing infringing trade marks can be seized at the point of entry into Australia. The vast majority of such products are voluntarily forfeited by the importer, but if a dispute arises, we can assist.

Correct trade mark use

It is important to use trade marks correctly, otherwise rights can be lost. Correctly identifying trade marks and trade mark ownership is also important. Davies Collison Cave can advise you how to consolidate your rights by using your trade marks correctly.

Renewals

Davies Collison Cave has partnered with a global renewal agency, Computer Patent Annuities, to provide dedicated renewal services to our clients. Although CPA manages the renewal of the majority of our clients' trade marks, Davies Collison Cave is also able to handle renewals directly.

Have more questions? We have answers.

Davies Collison Cave has been registering and protecting trade marks for over 100 years. Our experience and focus mean that you get the best advice and an international perspective. We encourage you to get in touch to see how we can help you.