Few things are more frustrating than discovering another business is using your brand. Whether it is your business name, logo or another distinctive feature of your identity, unauthorised use can affect your reputation, confuse customers and erode the value of what you have built.
If you have found yourself searching for “stop someone using my trade mark”, it is important to act promptly but not impulsively. Australian trade mark law provides several ways to protect your rights, but the best course of action depends on the facts of your situation. Understanding your options early can often prevent a relatively small issue from becoming an expensive legal dispute.
Can you stop someone using your trade mark?
In many cases, yes.
If you are the registered owner of a trade mark in Australia, the Trade Marks Act 1995 (Cth) gives you exclusive rights to use that trade mark in relation to the goods or services covered by your registration. If another business uses the same or a deceptively similar trade mark without permission, you may have grounds to stop that use.
When assessing whether trade mark infringement has occurred, several questions need to be answered.
- Is the other party using the same or a deceptively similar trade mark?
- Are they using it for the same or closely related goods or services?
- Is the use likely to cause consumer confusion?
- Does the other party have a legal defence or authority to use the trade mark?
- Is your trade mark registered?
No two disputes are identical. A careful assessment of the facts is essential before taking formal action.
What if your trade mark is not registered?
Many business owners assume they have no rights unless they have a registered trade mark. That is not always true.
Depending on the circumstances, you may still have remedies through passing off or claims for misleading or deceptive conduct under Australian Consumer Law. These claims can be more complex than relying on a registered trade mark, which is one reason registration is generally recommended wherever possible.
If you have not yet registered your brand, our article explaining why you should register your trade mark outlines the benefits of protecting your intellectual property before a dispute arises. Registration through IP Australia can provide a stronger legal foundation if enforcement becomes necessary.
What should you do first?
If someone appears to be using your trade mark, resist the temptation to send an angry email or post about it online.
Instead, start by gathering evidence. This allows you to understand the extent of the issue and gives your lawyer the information needed to assess your position.
Useful evidence may include:
- screenshots of websites and social media pages
- photographs of products, packaging or signage
- advertising material
- catalogues or brochures
- invoices or other documents showing how the trade mark is being used
- records of your own use of the trade mark and details of your registration.
The most persuasive evidence of all is evidence of actual instances of consumer confusion. For example, in some cases our clients have:
- been served with legal documents, when the documents related to another party
- had materials added to their account with a supplier, when the materials were actually bought by another company
- had council building approvals issued in their name, when the approvals were actually requested by another company
- received phone calls or emails from clients asking whether the other company is related to them
- had social media posts flagged, or been tagged in third-party posts, by concerned consumers.
Evidence of this kind shows that the confusion between the marks is not just theoretical, but is actually occurring — supporting the allegation that the marks are deceptively similar.
It is also helpful to keep a timeline of when you first became aware of the conduct and any communications with the other business.
Could the other party have a legitimate right to use the trade mark?
Before concluding that infringement has occurred, it is worth considering whether the other party may have a lawful basis for using the trade mark.
For example, they may:
- have a licence from the registered owner*
- have been granted a letter of consent to use and registration of the trade mark, or you may have otherwise waived your right to sue for breach under an earlier co-existence or settlement agreement*
- rely on a defence under the Trade Marks Act 1995 (Cth).
This is one reason legal advice should come before accusations. A measured approach often leads to better commercial outcomes.
* While it would be expected that you would know if a licence, co-existence or settlement agreement is in place, sometimes such agreements can be historical, such that they predate current management and their existence may have been forgotten. Thus, it is worth checking for any relevant historical documentation, prior to making any allegations.
Is a cease and desist letter the right next step?
For many businesses, the answer is yes — but it should not be the very first step.
Before any letter is sent, you should first check that your own house is in order. That means confirming that none of your rights are vulnerable to challenge and that you have secured all necessary priority dates. Sending a letter before your own position is secure can expose weaknesses in your registration.
Once your position is confirmed, a professionally prepared cease and desist letter is often the most effective way to stop someone using your trade mark without commencing court proceedings.
A well-drafted letter will generally:
- identify your registered trade mark
- explain why the conduct amounts to trade mark infringement
- request that the unauthorised use stop
- require infringing material to be removed
- seek undertakings from the infringing party, so that they are contractually obligated to refrain from engaging in the infringing conduct again
- provide a reasonable deadline for responding
- reserve your legal rights if the conduct continues.
Many disputes are resolved at this stage. Once the legal issues are clearly explained, the other party may decide it is in their interests to rebrand or negotiate a practical solution.
Do all trade mark disputes end up in court?
No. In fact, many do not.
Commercial negotiations often resolve disputes before litigation becomes necessary. Depending on the circumstances, the parties may agree that one business will adopt new branding, phase out the trade mark over an agreed period or enter into another commercial arrangement.
Resolving a dispute through negotiation can reduce legal costs, minimise disruption and provide greater certainty for everyone involved.
That said, there are situations where formal proceedings cannot be avoided, particularly where the infringement is ongoing or causing significant damage to your business.
What remedies are available?
If negotiations fail, court proceedings may become necessary to enforce your trade mark rights in Australia.
Depending on the circumstances, the Federal Court of Australia may order:
- an injunction preventing further use of the trade mark
- damages for financial loss
- an account of profits earned through the infringement
- delivery up or destruction of infringing goods
- payment of legal costs where appropriate.
The most suitable remedy depends on the evidence, the seriousness of the infringement and the commercial impact on your business.
What about business names and domain names?
Business owners are often surprised to learn that registering a business name is not the same as registering a trade mark.
A business name registration allows you to trade under that name but does not give you exclusive rights to prevent others from using similar branding.
Likewise, owning a domain name does not automatically give you trade mark rights.
If protecting your brand is important, registering your trade mark is generally the most effective way to secure legal protection.
When should you speak to a trade mark lawyer?
Many people wait until the dispute has escalated before seeking advice. By then, valuable opportunities may already have been missed.
Speaking with a lawyer early can help you:
- understand whether trade mark infringement has occurred
- assess the strength of your position
- avoid unnecessary correspondence
- develop an appropriate enforcement strategy
- protect your commercial interests from the outset.
Early advice can also help identify practical solutions that may resolve the dispute without lengthy litigation.
Common questions about stopping someone using your trade mark
How quickly should you act?
As soon as reasonably possible. Delaying action may allow the other party to strengthen their position in the marketplace and increase consumer confusion.
Can you stop someone using a similar logo?
Potentially. The answer depends on whether the logo is deceptively similar to your registered trade mark and whether it is being used for the same or related goods or services. It can also depend on whether you own the copyright in the logo, and whether the other party has copied your logo or independently created a logo that happens to look similar to yours.
Do you always need to go to court?
No. Many disputes are resolved through negotiation or after a properly prepared cease and desist letter.
How Tarr Law can help
If you need to stop someone using your trade mark, obtaining legal advice early can help you understand your options and protect your brand with confidence. Every matter is different and the right strategy depends on the nature of the alleged infringement, the available evidence and your commercial objectives.
At Tarr Law, we advise businesses on trade mark rights, trade mark enforcement and intellectual property disputes. Whether you need assistance investigating potential infringement, preparing a cease and desist letter, negotiating a commercial outcome or commencing legal proceedings, we can help you make informed decisions.
To learn more about our trade mark services or to discuss your circumstances, contact the Tarr Law team.
