There are three legal avenues available to those who believe that someone else is wrongly exploiting their product or brands or business identities (whether
or not registered or unregistered trade marks are involved).

Trade Mark Infringement

Where you have a registered trade mark under the Trade Marks Act 1995 (Cth) and a person is using a sign as a trade mark that is substantially identical
with or deceptively similar to your registered trade mark then you can seek an injunction, damages or an account of profits in relation to the (mis)use
of the sign.

Passing Off

No person may pass off their goods as those goods of another. The wrongful exploitation can involve the brand itself (in the form of the registered or
unregistered trade mark) or other aspects of your marketing – known as the ‘get up’ – i.e. design or colour schemes in packaging or advertising materials,
slogans, shop and display designs – in short, anything that you use to distinguish your genuine product from cheap imitations.

To prove that someone is passing off your goods you must prove that there is good will attached to your goods, that there is a misrepresentation by the
other person to the public that their goods are your goods and that you have suffered damage by reason of that misrepresentation. If a person is passing
off their goods as yours then you can seek an injunction, damages or an account of profits and in some rare circumstances exemplary damages.

Misleading or Deceptive Conduct

A person cannot engage in conduct that is or may be misleading or deceptive. Misleading or deceptive conduct is widely defined. To engage in misleading
or deceptive conduct is in breach of the Australian Consumer Law (“ACL”). The focus of a claim for misleading or deceptive conduct under the ACL
is the protection of consumers, by ensuring that consumers are not misled or deceived by the infringement of a trade mark or by any conduct that
might give rise to a claim in passing off.

Again, there is no requirement for a trade mark to be registered for an action under the ACL to be successful. However, there is a requirement that
any alleged infringement of the trade mark has occurred in trade and commerce, if it has not occurred in trade and commerce then the action will
be unsuccessful.

The relief available for successful claims of misleading or deceptive conduct is an injunction to stop the conduct and/or compensatory damages.

Aitken Partners are experienced in the areas of trade marks and intellectual property and we are able to assist you to ensure that you and your business
are best advised if you believe that your trade mark may be being infringed and to ensure you are legally protected in relation to your trade marks
and intellectual property by registering them.


You can call the AFA Member dedicated ‘legal help desk’ for all IR/HR and legal issues at 1300 AFA LAW (1300 232 529).

Author: Natasha Ozolins