You have just found another business using a name or logo that looks like yours. It might be a marketplace listing, a competitor's website, or a social media handle trading on the brand you have spent a year building. This is the moment trade mark enforcement becomes part of running your business, and how you handle the next few weeks will shape both the outcome and the cost.
What you are working towards is not necessarily a court case. You are working towards a documented, staged response: a clear statement of the rights you hold, a file of dated evidence, a decision about the outcome you want, and a sequence of responses that escalates only as far as the situation requires. Most brand disputes in Australia are resolved by letter, negotiation, or a formal process before IP Australia, not by litigation. A common assumption is that enforcement starts with a lawsuit; in practice it starts with checking your registration and putting your evidence in order.
What you need before you start
Before you contact anyone, work through this checklist. Each item affects the strength of your position:
- A registered trade mark: Registration under the Trade Marks Act 1995 (Cth) gives the owner the exclusive right to use the mark and to authorise others to use it in relation to the goods or services it covers. Without registration you may still have options, but they rest on reputation and the conduct involved, not on statutory rights.
- The registration details: the exact sign registered (a word, a logo, or both), the classes it covers, and the name of the registered owner. A mark registered in the founder's personal name, or in the wrong class, is a problem you want to find before you send the letter, not after.
- Evidence of your own use: dated records showing when and how you have used the mark, such as website captures, invoices, packaging proofs and marketing material. This is what you will rely on if you ever need to defend the registration or quantify damages.
- Evidence of the other party's use: dated screenshots of their website, listings, advertising and social profiles, plus anything that shows customer confusion.
- A defined outcome: what you actually want the other party to do, such as stop using the name, rebrand by a set date, or change a logo. It is hard to negotiate a resolution you have not defined.
- Authority to act: who can approve legal spend and who owns the decision, especially where there are co-founders or investors.
The two prerequisites that trip up small businesses most often are the ownership details (personal versus company registration) and the absence of documented use of the mark. Both are fixable, but both are far easier to fix before a dispute starts.
The enforcement process, step by step
The process below follows the order most disputes actually run. You can stop at any stage; the point of the sequence is that each step is inexpensive, and each one builds the case for the next.
Confirm what rights you hold
Start by checking the public Australian Trade Mark Search maintained by IP Australia to confirm exactly what is registered, in whose name, and in which classes. A trade mark is a sign used to distinguish your goods or services from those of others, and under s 20 of the Trade Marks Act 1995 (Cth) registration confers exclusive rights in relation to the goods and services for which it is registered. Pull out the certificate or the search result and check three things: the sign (word mark, logo, or both), the classes, and the owner's name.
If your mark is not registered, note that now. You can still act on the basis of passing off or on s 18 of the Australian Consumer Law, which sits in Schedule 2 of the Competition and Consumer Act 2010 (Cth) and prohibits conduct in trade or commerce that is misleading or deceptive or likely to mislead or deceive. But your position then rests on reputation and customer confusion rather than statutory rights, and having a lawyer assess its strength is worth doing before you commit to a course of action.
Gather and date the evidence
Collect a dated record of everything the other party is doing before you say a word to them:
- screenshots of their website, product pages, listings, ads and social profiles, with the URLs and capture dates
- their contact and business details, including any ABN or entity name
- examples of customer confusion, such as messages, comments or wrong deliveries
- a note of when you first became aware of the issue
Keep your communications professional throughout. Publicly calling the other party out, or encouraging your audience to pile on, rarely speeds up a resolution and can damage your own reputation if the dispute later becomes public. It can also complicate a claim if your conduct is scrutinised.
Assess whether it is actually infringement
Not every similar name is an infringement, and this is where enforcement decisions are won or lost. For a registered mark, s 120 of the Trade Marks Act 1995 (Cth) sets out when infringement occurs. In short, the other party must be using a sign as a trade mark, that sign must be substantially identical with or deceptively similar to yours, and the use must relate to the goods or services you registered for, or goods or services of the same description or closely related to them. Well-known marks receive wider protection, extending in some cases to unrelated goods or services.
The "use as a trade mark" requirement matters more than most business owners expect. A trade mark is used as a badge of origin, to tell customers where goods come from. Using a word descriptively, or referring to your brand for information, generally will not infringe. The Trade Marks Act also protects certain uses, such as a person using their own name in good faith. IP Australia's trade mark infringement guidance walks through these boundaries with practical examples.
If your mark is unregistered, the test is different: you are asking whether the other party's conduct is likely to deceive or confuse customers into thinking their business is connected with yours. That is the territory of passing off and of s 18 of the Australian Consumer Law, and it is assessed on evidence of your reputation and actual or likely confusion.
Decide your end goal and response level
Before you contact the other side, decide what a successful outcome looks like. Common options include:
- they stop using the name or logo entirely
- they rebrand within a set timeframe
- they modify the logo or tagline to remove the similarity
- they stop selling particular products under the branding
- the businesses agree on how each can coexist
Then match the response to the risk. A small local operator who copied a tagline by accident usually responds to a courteous letter. A large-scale seller trading deliberately on your name, or a well-resourced competitor, may only respond to a lawyer's letter backed by a credible threat of formal action. Working out which situation you are in is part of the assessment in the previous step.
Send a formal notice
For most disputes the next step is a formal letter, commonly called a cease and desist letter. It should identify your rights, describe the conduct you say infringes them, explain why it infringes, state what you want done, and give a reasonable deadline for a response. It should be accurate and firm without being aggressive.
There is a statutory reason to keep the letter measured. Under s 129 of the Trade Marks Act 1995 (Cth), a person who is threatened with infringement proceedings that turn out to be unjustified can sue for a declaration and damages. Overstating your rights, or threatening proceedings you are not in a position to bring, can hand the other side a claim against you. This is also why the letter should be drafted after you have confirmed what is actually registered.
An initial notice sent by email can work where the other party is small and the issue is simple. Where the other side is well-resourced, or the brand damage is serious, a lawyer-drafted letter is usually worth the cost. Either way, the letter creates the paper trail that shows you acted reasonably if the dispute later escalates.
Escalate through the formal routes
If the other party refuses to cooperate, the options depend on what is happening:
- Opposition: if someone has applied to register a mark that is too close to yours, you can oppose the registration. A notice of opposition must be filed within two months of the acceptance of the application being advertised in the Official Journal of Trade Marks, so this route closes quickly. IP Australia explains the opposition process and its timing.
- Removal for non-use: if a registration is blocking you but the mark has not been used in good faith for a continuous period of three years, an application can be made under s 92 of the Trade Marks Act 1995 (Cth) to have it removed from the register.
- Domain name disputes: if the problem is a .au domain name, the auDRP provides a cheaper and faster alternative to litigation for disputes about rights to the domain.
- Platform reports: marketplaces and social platforms have reporting and takedown processes for IP infringement, which are often the fastest way to deal with a seller you cannot otherwise identify.
- Court action: infringement of a registered trade mark can be pursued in the Federal Court of Australia. The relief available includes injunctions, damages or an account of profits, and in some cases additional damages for flagrancy, under s 126 of the Trade Marks Act 1995 (Cth). Court is the most expensive and time-consuming route, and it is rarely the right first move for a small business.
One point worth understanding about court action: the other side can challenge the validity of your registration in the course of defending an infringement claim. That is another reason to confirm your own registration and use history before you threaten proceedings.
Where people get held up
These are the mistakes that most often turn a manageable dispute into an expensive one:
- Missing the opposition window: the two-month period runs from advertisement of acceptance, not from when you notice the application. Checking the Official Journal for new applications in your space, or setting up monitoring, is the way to avoid discovering the window has closed.
- Writing a letter that overstates rights: threats that cannot be backed can attract an unjustified threats claim under s 129, and they also harden the other side's attitude. Confirm the registration first and keep the letter to what is accurate.
- Discovering ownership or class problems late: a mark registered in a former director's name, or covering only the logo when the brand name is what the other party copied, changes the whole strategy. This is a pre-dispute problem, which is why the checklist above puts registration details first.
- Having no evidence of use: if you cannot show when and how you used the mark, your damages case is thin and your registration is exposed to a non-use attack. Start the evidence file now, not when a dispute begins.
- Waiting until the other side has invested: the longer the other business trades under the name, the more expensive and emotional the dispute becomes. Early action is the single biggest lever you have.
When to bring in a lawyer
Trade mark enforcement is a process you can drive yourself for the early stages, but there are points where professional help changes the outcome. A lawyer can:
- confirm the registration position, including ownership, classes and any limitations, and run a proper clearance assessment of the other party's mark
- assess whether the conduct actually infringes, applying the s 120 tests or the passing off and misleading conduct principles to the facts you have gathered
- draft the cease and desist letter within the boundaries of the unjustified threats provisions, so the letter advances your position rather than exposing you
- prepare and file an opposition or non-use application with IP Australia within the relevant time limits
- run an auDRP complaint or coordinate platform takedowns where the dispute involves domain names or online sellers
- negotiate a settlement, including rebrand timelines, and document the terms so the dispute does not resurface
- advise on ownership and IP assignment issues early, so the business actually owns the marks and brand assets it is trying to enforce
Engaging a lawyer early is usually cheaper than engaging one after a letter has been mishandled or a deadline missed. Most firms will give you a straight assessment of the strength of your position and the likely cost of each route before you commit to anything.
What decides whether enforcement succeeds
The factor that most often determines the outcome is timing, and it operates twice. First, enforcement works best before the other party has sunk money into signage, packaging and marketing under the name, because at that point a reasonable request is easy to accept. Second, it works best after you have confirmed exactly what rights you hold, because every step from the first letter to a court application depends on the accuracy of that starting point. Act early, and act accurately, and most disputes resolve at the letter stage; delay either, and the cost and difficulty climb together.
The path is straightforward when you know it: confirm your registration, document the other party's use, assess whether it genuinely infringes, decide the outcome you want, send a measured formal notice, and escalate through opposition, non-use removal, domain disputes or court only as far as the situation requires. Registration under the Trade Marks Act 1995 (Cth) gives you the clearest rights to enforce, while unregistered businesses rely on reputation, passing off and the misleading conduct provisions of the Australian Consumer Law. If you are unsure where your position stands, legal advice early in the process is the cheapest way to find out.