Infringement can be a confusing and sometimes complex concept. The following 'Infringement 101' content has been developed to provide a practical and accessible guide to understanding some of the basics of infringement for each of the different IP rights.
This material has been developed in collaboration with Dr Mitchell Adams, Senior Lecturer in Intellectual Property Law, Swinburne University. Each article explains, in clear language, what qualifies as protected IP, how IP infringement can occur, and other useful information or requirements outlined in the legislation. By outlining what IP infringement looks like, basic obligations, and useable examples of IP infringement, the series aims to give all Australians—especially those new to the IP system—the confidence to understand IP infringement in a way that is useful to their business.
Intellectual property infringement occurs when someone uses, reproduces, or exploits another person’s or business’s creative work, invention, brand name, or design without permission. This concept applies across all types of intellectual property (IP) rights protected under Australian law, including patents, trade marks, designs, copyright, and plant breeders’ rights. Understanding the basics of IP infringement is essential for anyone who creates, innovates, or operates a business in Australia.
IP infringement looks different for each IP right. Generally, proving infringement means showing that the infringer has copied all or a substantial part of your product, method or process. Only the owner of an IP right or someone entitled to act on their behalf can start infringement proceedings.
Different countries have different IP laws. Australian IP registration does not usually protect against overseas infringement. If your IP is being infringed overseas you might need to consider different enforcement methods specific to those jurisdictions. Enforcing your IP overseas can be complicated, but there are still a wide range of options available.
Unregistered trade marks vs registered trade marks
A trade mark is a type of IP right which distinguishes your unique brand, product or service from other competitors in the market. A trade mark can be used to protect your business name or aspects of your brand.
Trade marks can be registered or unregistered. A registered trade mark generally provides stronger legal protection and is easier to enforce when compared to an unregistered trade mark. Registering your trade mark enables you to have:
a business asset which becomes more valuable the more successful your business becomes
the legal right to place the ® symbol next to your trade mark
exclusive rights to use your trade mark in Australia
the ability to legally deter others from using your trade mark
the ability to sell your trade mark, or license it for others to use.
However, not all trade marks are registrable. There are certain words, phrases and images that can't be registered, or can only be registered under special circumstances or upon provision of evidence. Below are some common reasons as to why a trade mark may not be registrable with IP Australia:
A trade mark is non-distinctive and is something other traders may legitimately want to use. This could include common surnames, pictures of the goods, descriptive words or images, ordinary colours and shapes of the goods, sounds and scents commonly associated with the goods, and names of geographical locations where goods or services may originate.
Earlier, confusingly similar trade marks for the same or similar goods or services exist.
A trade mark is inherently confusing, likely to deceive or confuse the public because of some inherent connotation. For example, a trade mark contains the words ‘vegan friendly’ but the goods claimed are beef products. This has the potential to mislead consumers as to the suitability of the product for vegan consumption.
A trade mark is scandalous, likely to cause offence to a significant number of Australians.
A trade mark is prohibited by legislation. Other Australian laws may prohibit the use or registration of various words or images as trade marks (e.g. Defence force words or symbols or the word ANZAC). In addition, as a member state to the Paris Convention for the Protection of Industrial Property(Opens in a new tab/window), Australia may refuse to register trade marks that consist of various words and images of foreign countries and intergovernmental organisations (e.g. UNICEF).
Note: While a trade mark may appear unregistrable on face value, it may still be able to achieve registration for other reasons, including that the owner has demonstrated it has or will become seen as a distinctive brand in the market.
Not all registered trade marks have equal strength
Some trade marks may be more difficult and costly to enforce even if they are registered, due to factors such as their inherent lack of distinctiveness (i.e. being too generic or descriptive), extent of usage in the marketplace, or evolving market conditions.
While all valid trade marks are enforceable, generally speaking, some trade marks can be easier to enforce than others. These trade marks are sometimes called 'strong' trade marks. Strong trade marks might be creative, arbitrary, fanciful or unusual, allowing you to easily distinguish your products or services apart from your competitors. The more unique or fanciful your trade mark is in relation to your goods or services, other traders are less likely to have legitimate reasons to use something that are the same or similar to your trade mark.
On the other hand, 'weak' trade marks may contain descriptive matter, or be very similar to trade marks being used by competitors for the same goods or services. Changes in market conditions or consumer behaviour may make a mark weaker over time too. In the case of ‘weak’ trade marks, it may be more difficult to show that other traders are using that trade mark (or something similar) in a way that the law considers an infringement, as opposed to purely descriptive use.
Tools and resources
IP Australia provides tools and resources to help you check whether your trade mark would meet requirements for registration. Checking your trade mark’s registrability can also give you some indication on the strength of your trade mark when you wish to enforce it in the future.
TM Checker
TM Checker(Opens in a new tab/window) is a free tool that helps give an early indication of problems your trade mark might face when it is examined. It uses AI to quickly check your proposed trade mark, based on internally-trained data and examinations previously conducted by IP Australia. You don't need an online account to use TM Checker, only if you decide to apply for a trade mark.
This easy-to-use tool gives your business:
An early indication of if your proposed trade mark can be registered in the relevant classes of goods and services.
An estimate of how much your application could cost.
An estimate of how long the trade mark application could take.
A seamless link to the trade mark application process.
TM Headstart
TM Headstart(Opens in a new tab/window) is an application method designed to assist first-time trade mark applicants. When you apply with TM Headstart, an examiner will assess your trade mark before you formally apply. You'll get feedback and an opportunity to amend your application, increasing your chances of getting a registered trade mark.
If you use TM Headstart:
You'll receive feedback from an examiner before you file your application so you can quickly understand if your trade mark is valid or likely to encounter objections during examination, and fix any errors.
After receiving feedback, you have five business days to submit changes (or formalise your application). Most amendments will attract a fee.
If your application is successful, your trade mark will be in effect from the date you formalise your application.
As discussed above, not every registered or registrable trade mark has equal level of strength or enforceability. There are multiple factors that can influence the enforceability of a trade mark when there is a dispute or suspected infringement. An IP professional such as an IP attorney can help you make this assessment on the overall strength of your trade mark and whether it would be enforceable in specific circumstances.
