What is Trademark Infringement?

Trademark law protects the legal rights of a registered trademark owner. Trademark infringement occurs when these rights are violated by the unauthorised use of a trademark by someone other than the owner. 

Imagine a scenario where you have a registered trademark covering clothing and retail services for a clothing brand, called HAPPY CAT. If another trader started selling a range of HAPPY CAT clothing items, without your authorisation, this would be an obvious case of trademark infringement: 

• Another party is using a trademark

  • Exactly the same as your registered trademark

  • for products identical to the goods protected by your registration

  • without your consent

If the competitor’s clothing items were branded as HAPPI KAT, this would also likely be a case of trademark infringement. 

In this instance, the marks are not identical, but they are probably so similar that they would cause consumers to be confused or deceived about the origin of the goods (given that the goods are identical to those covered by the trademark). This too would support a case of trademark infringement.

By registering your trademark, you are ensuring that you can easily establish that your rights have been infringed when someone copies your trademark. Your exclusive right to use your brand for the goods and services covered are protected by your trademark registration - a right which is recorded on a public register. As a trademark owner you need to keep watch and when necessary, take legal steps to protect your rights. For example, you may need to file a trademark opposition to prevent a new trademark similar to your from being registered.

Any new venture or even existing businesses who are introducing new products or services should make sure that they don’t infringe existing trademarks by imitating them, even inadvertently. Take steps to check for similar trademarks and ensure that you select a mark that is original and distinctive. Here are some tips for choosing a good trademark. 

While the well-known saying states that, “imitation is the highest form of flattery”, when choosing a new brand name, it’s risky as a strategy. 

The Trade Marks Act in Australia allows the court to award a variety of civil remedies as compensation to owners of trademarks who have suffered harm caused by trademark infringement.  If your business is found to have infringed on the trademark of another, it could result in you paying damages or an account of profits to the trademark owner. You would also be ordered to cease using the trademark in question. Under Australia’s Trade Marks Act 1995  and Copyright Act 1968, counterfeiting and piracy also constitute criminal offences. In addition to civil remedies, the court may impose penalties that include up to five years imprisonment and fines of up to $99,000. 

Some instances of infringement (and non-infringement)

A look at other trademark infringement cases presents some valuable lessons. We’ll use some examples of successful and unsuccessful infringement actions, which the international coffee outlet, Starbucks has taken in various countries.
Below are Starbucks’ key trademarks:

After a 12 year struggle from 2002-2013 in a case where Starbucks challenged Black Bear Micro Roastery for using the word CHARBUCKS, the appeal court judge ruled against Starbucks. Although the words sound similar, the evidence presented by Starbucks failed to convince the court that consumers were confused about the source of the goods. Black Bear was permitted to continue using CHARBUCKS for its own coffee blend.

In Korea in 2003, Starbucks challenged El Freya for their use of a similar looking logo for STARPREYA coffee. In this case, the court established that STAR is a generic word and the words BUCKS and PREYA do not refer to any specific concepts that can be compared. The court therefore ruled that the two marks were not the same or similar and therefore there was no infringement. However, other copycats did not get off so lightly.

Starbucks has won infringement cases against other imitators:

In 2003 an Indian business, Sardarbuksh Coffee & Co. was found to have infringed Starbucks’ trademark rights and they were compelled to change their name and use a new logo. The new name was Sardarji-Bakhsh. 

In a similar case in 2013, an EU appeal court ruled in favour of Starbucks after declaring that the similarity between the COFFEE ROCKS mark and the STARBUCKS logo was substantial. Although the degree of likeness may not be glaringly obvious, the use of a circle within a circle, the identical word COFFEE and a similar colour scheme meant that the court came down on the side of Starbucks. The Coffee Rocks example highlights the risks of imitating a well-known brand. 

What these Starbucks ‘wars’ illustrate, is that no matter if your business is large or small, trademark owners must guard their rights and protect their brand. In addition, before establishing a new business venture or introducing a new product, you should do your homework to ensure that there is no similarity with existing trademarks and no chance of trademark infringement. Be creative, choose a unique mark and then protect your trademark!