Often the question arises as to which intellectual property action is right for you. When deciding if you have a trade mark or copyright infringement matter on your hands, one must look to the principles of each.
Trade marks are used to identify and distinguish the goods or services of a particular business from those of others in the relevant consumer market. Trade marks are lodged, examined, opposed, accepted and registered through IP Australia. IP Australia and all aspects of trade marks are governed by the Trade Marks Act 1995 (Cth) (“the TM Act”).
marks can include a letter, word, name, signature, number, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of the same.
A registered trade mark will be infringed where the infringing item is:
- Substantially identical or deceptively similar; and
- The goods or services are closely related or in the same description or are closely related to the goods or services of the registered trade mark; plus
- The trade mark is “well known” with regard to sign infringements.
The penalties for trade mark infringement are governed by section 126 of the TM Act and include injunction, damages for account of profits and additional damages where appropriate.
As you will see, copyright protections are applicable in completely different situations to those of trade mark infringement.
Copyright protection in Australia is governed by the Copyright Act 1968 (Cth) (“the CR Act”) and the common law. Converse to trade marks, copyright protection will attach to original literary, dramatic, musical and artistic works. However, works that did not exist in a tangible form will be incredibly difficult to copyright, such as ideas, unrecorded musical or artistic works.
Copyright infringement will generally occur where the copyrighted material is used, or a substantial part of it is used without permission in one of the ways it is exclusively reserved to the copyright owner for use. There are some limited situations in which use of copyright material is allowed, such as with permission or a licence agreement.
If a copyright infringement occurs, an action for the same must be brought within six years of the date the infringement happened. The types of remedies which can be ordered include interlocutory relief, damages, account of profits, delivery up of the infringing articles and injunctions.
Separately to trade mark infringements there are potential criminal offences and penalties for copyright infringement where a conviction is recorded. The penalties associated with such convictions are often considerably higher for a corporation than an individual.
Often whether a trade mark or copyright infringement action is right for you will depend on:
- The material which has been infringed;
- Whether there has been any registration of your interest in that material; and
- The overall characteristics of the material.
Whether you or someone you know has suffered a trade mark or copyright infringement, there are several options to recover any loss suffered due to the same. Often, matters of this nature can be simple misunderstandings that can be resolved through private negotiation.
The information contained on this website is for general guidance on matters of interest only. The application and impact of laws can vary widely based on the specific facts involved.
Accordingly, the information on this site is provided with the understanding that the authors and publishers are not providing legal advice. As such, it should not be used as a substitute for consultation with professional legal advisers. Before making any decision or taking any action, you should consult with a professional lawyer from Rouse Lawyers.