Trademark infringement in Australia occurs when a person or entity uses a mark that is identical or deceptively similar to a registered trademark, without the consent of the trademark owner, and the use of that mark causes confusion in the marketplace. Australia has a comprehensive framework for protecting intellectual property (IP) rights, and trademark infringement is dealt with under the Trade Marks Act 1995 (Cth) (“the Act”), as well as common law principles. Under the Act, the owner of a registered trademark has exclusive rights to use the trademark in connection with the goods and services for which it is registered.

Section 120 of the Trade Marks Act 1995 (Cth) specifies the conditions under which a person infringes a registered trademark, including:

• Similarity of Marks: The mark used must be similar enough to the registered trademark to create a likelihood of confusion in the minds of consumers.
• Similar Goods or Services: The goods or services for which the mark is used must be related to the goods or services for which the registered trademark is used.
• Use in Commerce: The person must use the infringing mark in the course of trade.
• Well known Trade Mark: The person used a well-known trade mark

Common Types of Trademark Infringement in Australia:

1. Direct Infringement: This occurs when a business or individual directly uses a trademark that is identical or deceptively similar to a registered trademark on their goods or services without permission.
2. Use of a Deceptively Similar Mark: A defendant may not use an identical mark but one that is confusingly similar. This includes marks that sound or look alike or have a similar overall commercial impression, even if they differ in some elements.
3. Importation of Infringing Goods: Importing goods that infringe a registered trademark, even if the goods are produced outside Australia, can lead to infringement.
4. Use of a Mark in Domain Names or Online: Trademark infringement in the digital space, such as using a similar mark in an online domain name or in social media, is a growing issue.

Trademark owners in Australia can enforce their rights in several ways:

1. Cease and Desist Letter: Often, the first step in enforcement is sending a cease and desist letter to the alleged infringer. This letter demands that the infringer stop using the infringing mark, failing which legal action may follow.
2. Injunction: If informal resolution fails, the trademark owner may seek an injunction from the Federal Court of Australia to prevent the infringing party from using the trademark.
3. Court Proceedings: The trademark holder can file a lawsuit in the Federal Court of Australia for trademark infringement. The court has the authority to order remedies such as damages or an account of profits, as well as injunctions.
4. Customs Enforcement: Australian Customs can seize counterfeit goods that infringe registered trademarks at the border under the Customs Act 1901 (Cth).

In a trademark infringement case in Australia, several defenses can be raised to challenge the claim. Below are some of the common defenses available:

1. Non-Infringement

The mark in question may not be identical or deceptively similar to the registered trademark. This defense involves a detailed comparison of both marks to assess if consumer confusion is likely. A lack of distinctiveness in the registered mark could also negate the claim.

2. Fair Use

Descriptive Fair Use: The mark may be used descriptively to indicate the nature or characteristics of the goods or services, rather than as a brand.

Nominative Fair Use: This defense allows the use of the trademark to refer to the trademarked product or service for purposes such as comparison, criticism, or commentary, without causing confusion.

3. Abandonment of the Trademark

If the trademark has not been used in commerce for an extended period, it may be considered abandoned, and the trademark rights could be lost.

4. Prior Use

If the mark has been used in commerce before the registration of the trademark, common law rights may apply, which can override the registered rights of the owner.

5. Exhaustion of Rights (First Sale Doctrine)

Once the trademark holder sells or distributes goods in the market, their exclusive rights are exhausted, allowing resale or redistribution without infringement.

6. Consent or License

If permission has been granted by the trademark holder through a license or agreement, this serves as a valid defence against infringement.