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Asserting your rights - Phillips Ormonde Fitzpatrick

Asserting your rights



Marking of goods


Where a trade mark has been registered, the marking of goods to indicate that the mark is registered is recommended. This can be done by placing “®” next to the relevant trade mark in use.

This places competitors on notice of the existence of statutory rights. It is also advisable to indicate the name of the owner of the trade mark registration on the goods.

It is an offence to represent that a trade mark is registered in Australia when that is not the case.

It should be noted that the use of the symbol “TM” normally indicates that unregistered trade mark rights are claimed, but is not taken as a representation that a trade mark is registered. The TM symbol can be used at anytime after you start using the trade mark or apply to register the trade mark, whichever is earlier.

Customs registration


While trade mark registration allows you to take action against infringers, it may not deter unscrupulous importers and sellers of counterfeit goods from seeking to benefit from your trade marks in Australia.

Trade in counterfeit goods is a huge international problem.

Lodgement of a Notice with the Australian Customs Service will allow Customs Officers to look for and seize suspected counterfeit goods as they enter Australia.

The Customs Notice system is a cost-effective strategy to enhance your trade mark enforcement program. A notice lasts for four years and can be renewed for further four year periods. While the system does not capture all counterfeit goods, it does significantly improve your prospects of capturing such goods as they enter the country.

A similar system operates in New Zealand, although Notices last five years and a security deposit must be lodged.

Infringement of trade marks


A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with or deceptively similar to the trade mark in relation to goods or services in respect of which the trademark is registered. A person may also infringe by using the sign in relation to:

  • Goods of the same description as that of goods in respect of which the trade mark is registered
  • Services that are closely related to registered goods
  • Services of the same description as that of services in respect of which the trade mark is registered, or
  • Goods that are closely related to registered services

unless the person can show that deception or confusion is unlikely.

Infringement of a registered trade mark also occurs if the trade mark is well known in Australia and a person uses as a trade mark a sign that is substantially identical with or deceptively similar to the trade mark in relation to unrelated goods or unrelated services, if (because the trade mark is well known) the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the well-known trade mark.

The following acts do not infringe a registered trade mark:

  • Use in good faith by a person of the person’s name (eg John Smith, not Smith per se) or the name of the person’s place of business.
  • Use of a sign in good faith to indicate a characteristic of goods or services.
  • Use of the trade mark in good faith to indicate the intended purpose of goods or services.
  • Use of the trade mark for the purposes of comparative advertising.
  • Exercising a right to use a trade mark given under the Trade Marks Act 1995.
  • Use of a trade mark by a person where the person or the person’s predecessor in title has continuously used an unregistered trade mark in the course of trade since before the date of first use or application for registration by the owner of the trade mark registration.

There are some other limited exemptions from infringement.