Registered Trademarks Vulnerable to Infringement in Australian Law

Jul 4, 2024

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Registered Trademarks Vulnerable to Infringement in Australian Law

by | Jul 4, 2024 | Corporate Laws and Commercial Services

In Australia, a trademark is a form of intellectual property that provides legal protection for distinctive signs used to differentiate goods or services of one trader from others. This includes logos, slogans, shapes, colours, and even sounds or scents. By registering a trademark with IP Australia, the owner gains exclusive rights to use the mark in connection with the registered goods or services, thereby preventing others from using a similar mark that could confuse consumers. This legal protection not only enhances brand recognition and reputation but also safeguards the owner’s investment in their brand. Infringement of a registered trademark can lead to legal action, providing a robust framework to enforce the owner’s rights and seek remedies such as damages or injunctions against unauthorised use.

The effect of Section 124

The common belief is that once a trademark is registered in Australia, it enjoys complete protection, barring others from using it without authorisation. However, this is not always the case.

Pursuant to section 124(1) of the Trade Marks Act 1995 (Cth), if infringement is proven, the defendant may not be liable if they can prove the following:

  1. The defendant’s unregistered trademark for goods or services is similar or closely related to the plaintiff’s registered trademark;
  2. Before the plaintiff registered or used their trademark, the defendant continuously used an unregistered trademark on their goods or services; and
  3. The defendant’s unregistered trademark is substantially identical to or deceptively similar to the plaintiff’s registered trademark.


In essence, being registered does not automatically guarantee complete protection for a trademark owner in Australia. If someone has been using a similar unregistered trademark consistently before the registered trademark was established, their actions may not constitute infringement. Of course, this is just one defence among several available in Australia. There are various other circumstances where defendants can challenge claims of trademark infringement. For more information, please contact your solicitor.

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