We recently had occasion to protect our client’s trade marks in circumstances where a business which was clearly breaching it was in a designated ‘hot spot’ zone.
Our client was advised that a business operating in a hot spot zone interstate and in close proximity to a premise where a cluster emanated from was using a name deceptively similar to our client’s protected intellectual property and trade mark.
Normally it is concerning enough that someone could be breaching a client’s intellectual property rights, but our client became very concerned as his name and trade mark which identified a very popular and recognised brand in the hospitality industry which had an extraordinary social media presence and reputation which they had worked very hard to achieve.
Due to the fact we had lodged and registered his trade marks, we were able to write to the offending business interstate demanding them to immediately cease and desist from passing themselves off as our client.
Thankfully, the business complied and as a result avoided significant legal proceedings and costs including damages and injunctions.
The reputational damage that would have occurred if that business became a possible cluster to our client’s business could have been devastating even though they were in different states.
The social media world we live in can cause confusion and significant damage to a brand even though it is a thousand kilometres away through name and brand association, can be devastating.
In discussing the matter with our client after the event, they said our advice to protect their intellectual property by registering the trade marks very early in their business life was one of the best decisions and pieces of advice they had received.
There are four main steps to registering a trade mark:
- Prepare the application;
- Make the application;
- Proceed through the examination process; and
Once registered you must be vigilant to ensure that no one breaches your trade mark or try to use it for their own gain.
A trade mark registration allows you to more easily stop, injunct and recover compensation from someone who wrongly trades off your trade mark’s reputation in the market.
The benefit of registering your trade mark, rather than relying on the common law action of passing off, or statutory prohibitions on misleading and deceptive conduct means you do not need to prove:
- that your trade mark has a reputation;
- actual deception by the third party;
- loss or damage; or
- the offending party has been misleading or deceptive.
How can we help with your trade mark?
At FC Lawyers we have over 25 years’ experience assisting clients and businesses with their intellectual property needs.
Contact us for an obligation free quote regarding your trade marking needs.
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