Businesses often see their branding misappropriated. However, the range of intellectual property and allied rights which can attach to branding means care must be taken in developing a suitable strategy before taking action.
Branding registered as a trade mark
If the branding in question has been registered as a trade mark, then the simplest course is to consider trade mark infringement proceedings. Typically, infringement involves unauthorised use of a “substantially identical” or “deceptively similar” sign for:
- the same goods/services for which the mark is registered,
- goods/services “of the same description” as the goods/services for which the mark is registered,
- or services “closely related to the goods” for which the mark is registered (and vice versa).
However, because of the nuances of these tests, the possibility of noninfringing uses and/or defences and the risk of breaching the “unjustified threats” provisions of the Trade Marks Act 1995, it is advisable to seek advice from a trade mark law specialist before threatening or undertaking legal action for trade mark infringement.
Branding not registered as a trade mark
If the branding in question has not been registered as a trade mark, then other sources of rights may still exist, including possible rights under:
- the common law relating to ‘passing off’,
- the Consumer and Competition Act 2010 (CCA); and
- copyright in logos or other artistic or written materials (pursuant to the Copyright Act 1968).
Passing off most frequently occurs when a trader ‘puts off’ or ‘passes off’ that trader’s goods/services as those of another. The key ingredients of passing off are:
- reputation/goodwill accruing to the injured trader;
- a misrepresentation made by the wrongdoing trader; and
- damage to the goodwill of the injured trader.
The CCA, including the Australian Consumer Law (ACL), contains provisions which might apply depending on the nature of the particular branding misappropriation, including prohibitions in trade or commerce against:
- misleading or deceptive conduct or conduct likely to mislead or deceive; and
- making false or misleading representations about goods/services (including as to sponsorship, approval or affiliation).
Finally, copyright may be relevant where a logo is involved. Although it is unlikely that copyright will subsist in a simple word or phrase (as a literary work), where the branding in question contains or comprises graphical elements, there may copyright in those elements as an artistic work.
Unregistered rights in branding can be difficult to identify and assert. Professional advice on this should be taken accordingly.
Moulis Legal can assist in registering your brand as a trade mark. We can also provide advice and services in relation to any unauthorised use of your brand, including taking appropriate enforcement action. If successful in litigation for unauthorised use of your brand, you may be entitled to damages or an account of the profits made by the infringing party.