Trademark Infringement in Australia: What It Is and What to Do

Whether it’s a competitor launching a suspiciously similar logo, an overseas seller slapping your brand name on knock-off products, or a new entrant in your industry adopting a name that’s confusingly close to yours, trademark infringement is one of the most common — and most stressful — intellectual property issues Australian businesses face.

Understanding what constitutes trademark infringement under Australian law, recognising when your rights have been violated, and knowing what steps to take can mean the difference between protecting your brand and watching it erode. This guide walks you through the essentials.

What Is Trademark Infringement?

Trademark infringement occurs when a person or business uses a sign — a word, logo, phrase, image, shape, colour, sound, scent, or any combination of these — that is substantially identical or deceptively similar to a registered trademark, without the owner’s authorisation.

In Australia, trademark rights are governed by the Trade Marks Act 1995 (Cth), administered by IP Australia. The Act grants the registered owner exclusive rights to use the trademark in relation to the goods and/or services for which it is registered and to authorise others to use it. When someone infringes those rights, the owner has legal remedies available through the Federal Court of Australia or the Federal Circuit and Family Court of Australia.

It’s worth noting a critical distinction: trademark infringement applies to registered trademarks. If your brand is unregistered, you may still have rights under the common law tort of passing off or the Australian Consumer Law (specifically sections 18 and 29 of the Competition and Consumer Act 2010), but these are separate causes of action with different requirements and are generally harder to establish.

The Legal Test: When Does Infringement Occur?

Section 120 of the Trade Marks Act 1995 sets out the circumstances in which a registered trademark is infringed. There are three main scenarios:

1. Use of a Substantially Identical or Deceptively Similar Mark on the Same Goods or Services

Under section 120(1), a person infringes a registered trademark if they use, as a trademark, a sign that is substantially identical with, or deceptively similar to, the registered trademark in relation to goods or services in respect of which the trademark is registered.

This is the most straightforward type of infringement. If your trademark is registered for “skincare products” in class 3 and another business starts selling skincare products under a mark that looks or sounds confusingly like yours, this provision is likely engaged.

2. Use on Closely Related Goods or Services

Section 120(2) extends protection beyond the exact goods or services covered by the registration. Infringement can occur when a substantially identical or deceptively similar mark is used on goods or services that are of the same description as, or closely related to, the registered goods or services — provided that the use would be likely to deceive or cause confusion. For more details, see our guide to the trademark application process: what happens after.

For example, if your trademark is registered for coffee but a competitor uses a deceptively similar mark for coffee machines or café services, this subsection may apply.

3. Well-Known Trademarks

Section 120(3) provides broader protection for well-known trademarks. If a mark is well known in Australia, infringement may occur even when the infringing sign is used on goods or services that are unrelated to those covered by the registration — provided the use would indicate a connection between the infringer and the trademark owner and would be likely to prejudice the owner’s interests.

This provision protects household-name brands from having their reputation diluted or tarnished, even in completely different industries.

What Counts as “Use as a Trademark”?

A threshold question in any infringement analysis is whether the alleged infringer is using the sign as a trademark — that is, as a badge of origin to distinguish their goods or services from those of others. Purely descriptive use, decorative use, or use in comparative advertising may not constitute trademark use, though these defences are nuanced and fact-dependent.

The courts have considered this question extensively. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963), the High Court examined what constitutes “use as a trademark,” and this foundational case law continues to guide contemporary decisions.

Key Concepts: “Substantially Identical” vs “Deceptively Similar”

These two phrases carry distinct legal meanings:

• Substantially identical — The marks are compared side by side. The question is whether they are essentially the same, allowing for minor, inconsequential differences. This is a relatively strict test.

• Deceptively similar — This is a broader test. A mark is deceptively similar to another if it so nearly resembles it that it is likely to deceive or cause confusion. The comparison takes into account imperfect recollection — the idea that consumers don’t always see both marks simultaneously and may carry only a general impression of one when encountering the other.

The deceptive similarity test is inherently contextual. Courts consider the look, sound, and meaning of the marks, as well as the nature of the goods or services and the relevant consumer audience. We cover this topic in how to register a trademark in australia:.

Common Examples of Trademark Infringement

Infringement can take many forms. Some of the most common scenarios Australian businesses encounter include:

• Copycat brands — A new business adopts a name, logo, or tagline that is confusingly similar to an established registered trademark in the same industry.
• Counterfeit goods — Products bearing a replica of a registered trademark are manufactured or sold without authorisation, particularly common in online marketplaces.
• Domain name squatting — A third party registers a domain name incorporating a registered trademark, often with the intent to sell it back to the trademark owner or divert traffic.
• Social media impersonation — Unauthorised use of a registered trademark as a social media handle, page name, or in advertising.
• Parallel imports and grey goods — Genuine products imported without the trademark owner’s consent, which can raise infringement issues in certain circumstances.
• Keyword advertising — A competitor bids on your registered trademark as a keyword in search engine advertising to trigger their ads when consumers search for your brand.

Defences to Trademark Infringement

The Trade Marks Act 1995 provides several defences that an alleged infringer may raise. Key defences under section 122 include:

• Good faith use of a person’s own name or the name of their place of business — provided it is not used as a trademark.
• Good faith use of a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristic of goods or services.
• Good faith use of the trademark to indicate the intended purpose of goods or services, particularly accessories, spare parts, or compatible products.
• Comparative advertising — Using a trademark to compare goods or services, provided the use is honest.
• Prior continuous use — If the alleged infringer was continuously using the mark before the priority date of the registered trademark, they may have a defence.
• The trademark was registered without the prior use necessary to support it (in certain limited circumstances).

Each defence has specific requirements and limitations. They are not automatic shields, and whether they apply depends on the particular facts.

What to Do If Your Trademark Is Being Infringed

Discovering that someone is using your trademark — or something dangerously close to it — can be alarming. Here’s a structured approach:

Step 1: Gather Evidence

Before taking any action, document everything. Collect screenshots, photographs, purchase receipts, URLs, social media posts, advertising materials, and any other evidence of the infringing use. Note dates and locations. If the infringement is occurring online, use web archive tools and take timestamped screenshots — online content can disappear quickly. See also our how to respond to a trademark opposition.

Step 2: Confirm Your Rights

Verify your trademark registration on the Australian Trade Marks Online Search System (ATMOSS) via IP Australia’s website. Check that your registration is current, that the goods and services covered are relevant, and that the infringing use falls within the scope of your rights. If your trademark has lapsed or the infringing use relates to goods or services outside your registration, your options may be more limited.

Step 3: Assess the Situation

Not every instance of similar branding constitutes actionable infringement. Consider whether the use is genuinely likely to deceive or cause confusion, whether it’s occurring in the same or a related market, and whether it’s a deliberate act or an innocent coincidence. This assessment will inform whether a formal legal response is proportionate.

Step 4: Seek Professional Advice

Trademark infringement involves complex legal analysis, and the consequences of getting it wrong — in either direction — can be significant. Sending an unwarranted cease and desist letter can expose you to claims of unjustified threats under section 129 of the Trade Marks Act 1995. Equally, failing to act can be interpreted as acquiescence.

This is where working with a specialist trade marks professional makes a real difference. A firm like Signify IP, a boutique practice focused exclusively on trade marks, can provide enforcement and infringement advice tailored to your situation. Based in South Australia and servicing clients Australia-wide, Signify IP offers fixed-fee pricing with no hidden costs, so you’ll know exactly what you’re paying from the outset. Their director, Hollie Ford, is a Registered Trade Marks Attorney with the Trans-Tasman IP Attorneys Board and a member of FICPI, IPTA, and IPSANZ. You can reach them at trademarks@signifyip.com.au or on +61 8 8274 3759 for a discovery call.

Step 5: Send a Cease and Desist Letter

If professional advice confirms that infringement is occurring, the usual first step is a formal cease and desist letter — sometimes called a letter of demand. This letter identifies the registered trademark, describes the infringing conduct, and requests that the infringer stop using the mark, often within a specified timeframe.

A well-drafted cease and desist letter resolves the vast majority of trademark disputes without the need for court proceedings. Many infringers are unaware they are infringing and will comply voluntarily.

Step 6: Consider Alternative Dispute Resolution

If a cease and desist letter doesn’t resolve the matter, mediation or negotiation may be appropriate before escalating to litigation. In some cases, the parties can reach a commercial resolution — such as a coexistence agreement, a licence, or a rebrand — that avoids the cost and uncertainty of court proceedings. Our when do you need a trademark lawyer? offers additional context.

Step 7: Commence Legal Proceedings

If informal resolution fails, the trademark owner can commence proceedings for infringement in the Federal Court of Australia or the Federal Circuit and Family Court of Australia. Available remedies include:

• Injunctions — Court orders requiring the infringer to stop the infringing conduct.
• Damages or an account of profits — Financial compensation for the loss suffered by the trademark owner, or disgorgement of the profits the infringer made from the infringing use.
• Delivery up or destruction — Orders for infringing goods or materials to be handed over or destroyed.
• Additional damages — In cases of flagrant infringement, the court may award additional damages.

Litigation is typically a last resort due to cost and time, but for serious or persistent infringement, it may be the only effective remedy.

What to Do If You’re Accused of Trademark Infringement

If you receive a cease and desist letter or are otherwise accused of infringing someone else’s trademark, don’t ignore it — but don’t panic either.

• Take the allegation seriously. Review the letter carefully and note any deadlines.
• Check the claimant’s registration. Verify that they hold a valid, current registration and that your use falls within the scope of their registered goods or services.
• Consider whether you have a defence. Prior use, good faith descriptive use, and other statutory defences may apply.
• Seek professional advice promptly. A trade marks attorney can assess the merits of the claim, advise on your options, and help you respond appropriately.
• Be cautious about unjustified threats. If the allegation is baseless, section 129 of the Trade Marks Act 1995 allows you to seek remedies against the person making the threat, including a declaration that the threats are unjustified, an injunction, and damages.

Prevention Is Better Than Cure

The most effective way to deal with trademark infringement is to reduce the risk of it happening in the first place:

• Register your trademark. An unregistered trademark is far harder to enforce. Registration gives you a presumption of validity and exclusive rights across Australia.
• Conduct thorough searches before adopting a new brand. A comprehensive trademark search before you launch can identify potential conflicts early, saving you from inadvertently infringing someone else’s mark — or choosing a mark that’s difficult to protect.
• Monitor the marketplace. Regularly review trademark databases, business name registers, domain registrations, and online marketplaces for potential infringements. Trademark watching services can automate this process.
• Act promptly. Delay in addressing infringement can weaken your position and may be treated as implied consent.
• Keep your registration current. Ensure your trademark registration is renewed on time and covers the goods and services you’re actually using.

The Bottom Line

Trademark infringement is a serious issue, but it’s also a manageable one — provided you understand your rights, act promptly, and get the right advice. Whether you’re a startup protecting your first brand or an established business managing a portfolio of registrations, knowing when and how to enforce your trademark is essential to preserving the value of your brand.

If you suspect your trademark is being infringed — or if you’ve been accused of infringement yourself — speaking with a specialist trade marks professional early can save you time, money, and a great deal of stress.