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A new age in trademark infringement defences in Australia
Trademark holders should be more cautious as a new trend arises in legal cases to bring a cross-claim that will declare trademarks invalid based on it being filed in the wrong name.
Tony Zhang
The warning comes from Brisbane intellectual property and trademark lawyer Nicole Murdoch who says the trend in trademark litigation matters is for the defendant to plead that it does not infringe the trademark because it is invalid.
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“Businesses need to ensure the trademark is filed in the correct name so that it can be enforced at a later date,” Ms Murdoch said.
“It’s very easy to apply for a trademark online by simply checking boxes for the goods or services of the application.”
Ms Murdoch says the process of obtaining trademark registration is not as simple as choosing the goods and services of an application, or even choosing the trade mark.
“In Australia, we have some idiosyncrasies when it comes to intellectual property law and Australia just isn’t like many other countries when it comes to trademark law. Australia is a first-to-use country, not a first-to-file country,” Ms Murdoch says.
Section 27 of the Australian Trade Marks Act requires that only persons who claim to be the owner of the trademark can apply to register a trademark. That is also a ground for the cancellation of a trademark, according to Ms Murdoch.
Previously, it was not common for a respondent to a trademark infringement proceeding to file for a counterclaim for invalidity of the trademark or to argue that point before a case is filed – until now.
“We are seeing more and more cases of the trademark being threatened prior to cases being filed and trademark cross-clams for invalidity being raised as a defence to a trademark infringement claim,” Ms Murdoch says.
“Another lesson that needs to be realised is that trademarks are a ‘use it or lose it’ regime. It may be that an international application which designates Australia is invalid given that some other countries are a first-to-file country.”
