How to Monitor a Trade Mark for Infringement, a Step-by-Step Guide

Your trade mark is registered. The certificate is filed away, the launch is done, and the mark is on your products, your website and your signage. At this point it is easy to treat registration as the finish line of brand protection. In fact it is the starting line. A registered mark only earns its keep if you notice when someone else starts trading under a sign that looks or sounds like yours, and act before the problem compounds.

The process set out below builds a monitoring routine that ends with a clear picture on any given day: who is using signs that resemble your mark, whether any of that use amounts to infringement, and what you are going to do about each instance. The routine takes in new trade mark applications, new business and company names, domain registrations and the online marketplace. One thing to understand before you start: nobody polices your mark for you. IP Australia examines applications against the register and can refuse conflicting marks at the application stage, but it will not send you an alert when a competitor starts using a similar sign. That watching is your job.

Before you start: what you need in place

Monitoring is only as good as the groundwork under it. Work through this checklist before you build the routine. Most of these items take an afternoon; the ones that trip people up are flagged.

A current registration: your infringement rights under s 120 of the Trade Marks Act 1995 (Cth) (the Act) belong to the registered owner, so the mark must be on the register and renewed. Registrations run for 10 years and are renewable; an expired mark cannot be enforced for infringement.
Your registration details: the mark exactly as registered, your registration number, and the classes of goods and services it covers. The protection in s 120 is tied to those goods and services, so know them precisely.
A working understanding of the infringement tests: you cannot spot infringement without knowing what it looks like. Section 120 is the core: using as a trade mark a sign that is substantially identical with, or deceptively similar to, your mark, in relation to the goods or services it is registered for. Owners who skip this step tend to chase every similar-looking sign and waste time on uses that are not infringement.
A record of your own use: note where and how you actually use the mark, such as your website, packaging, advertising and trade displays. You will need it for comparisons, and a registered mark that is not genuinely used is vulnerable to removal for non-use.
A case file system: even a simple spreadsheet will do, because every finding needs a date, a URL or location, and a screenshot. Evidence gathered now is what makes enforcement possible later.

The monitoring routine, step by step

The routine moves from the official registers outwards to the market. There is no single portal that does all of it, so the steps below follow the order in which conflicts most often surface: first on the trade marks register, then in business and company name registers, then in the market itself.

Step 1: Watch the trade marks register for new applications

The register is where conflicts become visible earliest. Every application is published, so a rival who wants your mark will usually appear here before they appear anywhere else. IP Australia's search portal is the Australian Trade Mark Search, which replaced the old ATMOSS system and is freely available at search.ipaustralia.gov.au. The same portal hosts TM Checker, a simpler tool that gives feedback on whether a mark is likely to be registered.

Word searches: your mark in full, plus the variants that matter: misspellings, phonetic spellings, shortened forms and the words that sit alongside your mark in your branding.
Class searches: search the classes your registration covers so you see every new application in your trading space, not just exact matches.
Image searches: for logo marks, use the image search function to find devices that resemble yours.

Each application shows its status, its owner, its priority date and the goods and services it covers. The moment that matters is acceptance. When IP Australia accepts an application it is advertised, and s 52 of the Act gives any person the right to oppose registration by filing a notice of opposition within the prescribed period: two months from advertisement, extendable in limited circumstances. Opposition is the cheapest point at which to stop a conflicting mark, because the fight is about registration rather than about a business already trading under the sign. If the window closes, the mark can be registered and your only routes are infringement or passing off proceedings, which are slower and more expensive.

Step 2: Check new business and company names

A new business name or company registration can signal that someone intends to trade under a new sign. Business names are registered through ASIC, either on ASIC Connect or through the government's Business Registration Service, and company names are registered with ASIC as part of incorporation. Both registers are public, and checking them monthly for names that resemble your mark is quick.

A registration is not a licence to use the name: ASIC does not check trade marks before registering a name, and it warns that registering a business name does not protect you against legal action if you use someone else's trade mark. Your own registration is a warning sign about the other party's intentions, not a ruling that they can trade that way.
A name registration alone is not infringement: to infringe, the holder must actually use the sign as a trade mark in relation to goods or services covered by your registration. The step after finding a conflicting name is to look at whether the holder is trading under it: website, listings, products.

The registers tell you what people intend to do. The market tells you what they are actually doing, and that is where most real infringement lives.

Search engines: search your mark and its misspelled and phonetic variants, and pair the mark with words like "buy", "shop" or "Australia". Check the results pages, not just the first page, and repeat the search monthly.
Social media and marketplaces: search handles and hashtags on the major platforms, and search product listings on marketplaces such as eBay, Amazon, Etsy and Temu. Sellers of counterfeit or lookalike goods often operate only through these channels.
Images: use reverse image search to find copies of your logo.
Domain names: WHOIS lookups show who holds a domain that resembles your mark, including .au domains administered under auDA's framework. Registering a domain is not itself infringement, but a domain that mimics your mark and is parked, offered for sale, or used for similar goods is a serious flag.

Record everything you find in the case file with a date and a screenshot. What looks like a minor detail now is often the evidence that decides an infringement claim later.

Step 4: Assess each finding against the infringement tests

Not every use of a similar sign infringes, and working through the test separates genuine infringement from noise.

Use as a trade mark: s 120 requires the sign to be used as a trade mark, that is, to indicate the source of the goods or services. A rival describing the characteristics of their own product, such as a descriptive word, is usually not infringing use.
Substantially identical or deceptively similar: the two limbs are different tests. Substantially identical asks for a side-by-side comparison of the two signs, noting their similarities and differences and their essential features. Deceptively similar, defined in s 10 of the Act as a sign that so nearly resembles your mark that it is likely to deceive or cause confusion, asks about the impression your mark leaves in the memory of an ordinary consumer who sees the other sign without your mark in front of them. The High Court in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66 explained that all questions concerning trade marks must be considered against the background of the usages of the particular trade.
The goods and services: the strongest case is use in relation to the goods or services your mark is registered for (s 120(1)). Protection also extends to goods of the same description and closely related services (s 120(2)), and, for marks well known in Australia, to unrelated goods and services where the sign would be taken as indicating a connection with you and your interests would be adversely affected (s 120(3)).
Defences: s 122 of the Act provides that certain uses do not infringe, including good faith use of a person's own name, descriptive use and comparative advertising. If a defence applies, there is no infringement even though the sign resembles yours.

Infringement claims are also commonly run alongside passing off and misleading or deceptive conduct claims under the Australian Consumer Law (Cth), and a lawyer will usually plead all three where the facts support it. If your assessment is that a finding is genuine infringement, move to the next step; if it is borderline, that is the moment to take advice rather than guess.

Step 5: Act on confirmed infringement, in escalating steps

The point of monitoring is to act while the problem is small. The escalation path is the same for most disputes.

Letter of demand: the first step is a formal letter identifying your registration, the infringing use and the conduct you require to stop, with a short deadline. It puts the other party on notice and often ends the matter. Keep the allegations confined to rights you can actually enforce.
Negotiation: many infringers will stop on a letter; others will negotiate. Common terms include a period to rebrand, undertakings, an agreed wind-down of stock, or occasionally compensation. The commercial reality is that both sides usually want to avoid the cost of court.
Court proceedings: if the infringer refuses to stop and negotiation fails, the next step is proceedings in the Federal Court, which has jurisdiction over matters arising under the Act (s 191), usually commenced by an originating application and statement of claim. The relief available under s 126 includes an injunction and, at your option, damages or an account of profits, with additional damages available where the infringement was flagrant.

Timing matters throughout. The longer infringing use continues, the more goodwill the other party builds and the harder it becomes to unwind, which is why the monitoring routine exists in the first place.

Across all five steps, these are the places businesses most often get held up:

Searching once and stopping: the register and the market change constantly, and monitoring only works as a recurring routine. Schedule it monthly at least.
Searching only for exact matches: misspellings, phonetic equivalents and image copies are where infringement hides. Build the variant list once and reuse it.
Missing the opposition window: two months from advertisement sounds generous until it passes. Diarise the advertisement date for every conflicting application.
Acting without evidence: a letter of demand without screenshots, dates and URLs is a weak letter. Keep the case file current as you go.

When to bring in a trade mark lawyer

Most of the routine can be run in-house, but a trade mark lawyer earns their fee at the assessment and action end. A practitioner will set and run the search parameters properly, including class, phonetic and image searches; assess whether a particular use actually infringes under the s 120 tests and the s 122 defences; decide between opposition, a letter of demand, negotiation and proceedings; draft the notice of opposition, the letter and any pleadings; and manage the hard deadlines such as the opposition window. A lawyer will also check the health of your own registration, including whether your use matches the mark as registered and whether the classes still cover what you sell, because a registration that is vulnerable to removal for non-use is a weak foundation for enforcement. For a business that treats its brand as an asset, an annual review of the monitoring file with a lawyer is a modest cost compared with discovering infringement years after it started.

What decides whether monitoring works

The single factor that decides whether this process succeeds is consistency, because every stage of it runs on deadlines and repetition. The register publishes new applications every week, the opposition window runs for two months from advertisement and then closes, and the infringements that actually damage your business usually appear as misspellings and marketplace listings rather than exact copies of your mark. Businesses that search once at registration and file the certificate away assume someone is watching on their behalf. Nobody is watching, and the businesses that protect their brands are the ones that keep the routine running and act inside the windows the law provides.

To summarise: infringement under s 120 requires use as a trade mark of a sign that is substantially identical with or deceptively similar to your registered mark in relation to the goods or services it protects, so monitoring starts with knowing your registration and the tests. Watch the Australian Trade Mark Search for new applications and oppose conflicting ones within two months of advertisement, check new business and company names with ASIC, search the market including domains and marketplaces, assess what you find against the tests, and escalate from a letter of demand to negotiation to Federal Court proceedings. If any step feels uncertain, take advice before the windows close.