Trademark Enforcement in Australia
Many countries have similar systems for the registration and enforcement of trademarks. However, the trademark enforcement of the Australian legislation differs from the US system and examines the main border protection methods available in Australia to trademark owners.
Customs provisions under the Trademarks Act 1995 and the Copyright Act 1968 allow Australian Customs to seize goods that infringe trademarks and copyright when they are imported into Australia. However, under these Acts, a trademark owner, an authorized user of a trademark, a copyright owner or the owner's exclusive licensee may lodge a Notice of Objection objecting to the importation of goods that have a trademark applied to them and is identical or deceptively similar, and/or copies of nominated copyright works, if those copies would have constituted an infringement of copyright had they been made in Australia by the importer. Trademark notices of objection are valid only in respect of the goods for which the relevant trademark is registered. If a trademark is comprised of a stylized word mark or a device mark in which coipyright subsists, it would also be appropriate to lodge a notice of objection immediately. The notice is valid for four years and can be re-lodged to ensure ongoing protection. The notice, if it is no longer needed, may be withdrawn at any time. Separate notices of objection are required for trademarks and copyright. In the case of trademarks. it is well settled that trademark registrations in Australia cannot protect against the importation of genuine goods. Indeed Section 123 of the Trademarks Act specifically provides a defence to infringement where a trademark is applied to goods with the consent of the owner. In the case of copyright, the Copyright Act has detailed provisions preventing use of copyright subsisting in non-infringing labels, packaging, instructions for use and the importation of the principal goods to which they relate.
Where a notice of objection is in place and Customs seizes goods, it will send a notice of seizure to the importer and hold the goods for 10 working days. If the objector does not commence legal proceedings within the stipulated time frame, Customs must release the goods to the importer unless they have been voluntarily forfeited in which case the Customs will be at liberty to dispose it off by destruction or donation to a charity or in accordance with a court order.
Direct infringement:- The Trademarks Act contains detailed enforcement provisions in Section 120 direct infringement. Under Australian Law, a person will infringe a trademark registration if the person uses as a trademark a sign that is substantially identical or deceptively similar to the trademark in relation to goods or services for which the trademark is registered.
Indirect infringement:- The Australian Act also deals with indirect infringement which occurs when a mark is substantially identical or deceptively similar to a registered mark is used in relation to goods or services of the same description as those in respect of which the trademark is registered or goods or services are closely related to the registered goods as the case may be. However, if the alleged infringer establishes that the use of the mark in those circumstances is unlikely to deceive or cause confusion, there will be no infringement.
One final point to make in respect of the enforcement of trademark registration in Australia is that there should be both (a) at the time of application, a good-faith intention to use the trademark in Australia, to authorize use of the trademark or to assign the trademark to a body corporate for use by the body corporate in Australia; and (b) after registration, actual use. In the absence of these elements, the validity of the trademark registration would be questionable. After a mark has been registered for five years from the date of application, it is subject to removal by a third party, If it is established for a continuous period of three years ending one month before the day on which the non-use application is filed and the registered owner did not use the trademark in good faith in relation to the goods or services. In this respect, a trademark will be used in Australia if goods have been offered for sale in Alustralia under the mark or if the mark has been used in an advertisement for the goods in the course of trade.
Conclusion:- The brief messages to be taken from this is that trademark owners in Australia should consider lodging notices of objection with Australian Customs where they anticipate that there may be imports of infringing goods. The second is that trademark owners should ensure that they can establish a good-faith intention to use at the time of application and sufficient use of the mark in Australia after registration in order to protect the validity of the mark for enforcement purposes.
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