Intellectual Property Infringement

An action for infringement of a Trade Mark may be brought if a person uses, as a trade mark, a sign or mark that is substantially identical with, or deceptively similar to, a registered Trade Mark in relation to goods or services in respect of which the Trade Mark is registered (some exceptions apply).

If a Trade Mark is infringed the owner may be entitled to injunctive relief and/or damages or an account of profits.

An action for passing off is available where a party falsely represents or holds out that their goods or services are those of another party, or that their business is somehow associated with the other party, so as to cause, or be likely to cause, damage to the other party’s goodwill or reputation.

Passing off generally involves the use of names, brands, logos or packaging that are the same or deceptively similar to another party with established goodwill or reputation in relation to them.

The principal remedy sought in an action for passing off is an injunction to restraining the offending party from engaging, or continuing to engage, in the conduct complained of. The Court may also order damages or an account of profits where appropriate.

If a person engages in misleading or deceptive conduct in trade or commence in breach of The Australian Consumer Law, including in relation to a brand, logo or quality relating to goods or services, an action may be brought for damages caused by the breach.

The availability of misleading or deceptive conduct is, however, complicated in circumstances where:

• the complainant does not have an established reputation in the geographical area where the conduct complaint of took place, or
• the conduct occurs online and questions arise in relation to whether the conduct merely caused confusion.

An action may be brought for breach of confidence if a person misuses or misappropriates Confidential Information disclosed to them in circumstances where an obligation of confidence was expressly or impliedly imported; including under Non-Disclosure Agreement or other agreement containing provisions dealing with confidential information.

In an action for breach of confidence the remedies available include an injunction to restrain disclosure or use of the information, damages or an account of profits for improper use of the confidential information.

If Copyright subsists in relation to an original work an action for infringement of the copyright may be brought if a person reproduces, publishes, performs, communicates to the public, or adapts, a substantial part of the works without the consent of the owner or exclusive licensee.

In an action for infringement of copyright the Court may grant an interlocutory or final injunction to restrain the infringement or threatened infringement. A copyright owner or exclusive licensee may also seek damages or an account of profits for infringement and orders for delivery up of infringing copies or plates.

Courts may also award additional damages in appropriate circumstances having regard to the flagrancy of the infringement, the need to deter similar infringements of copyright and a range of other circumstances.

An action may be brought for infringement of a registered Design if a person makes, imports for sale or use, sells, hires or otherwise disposes of or uses a product which embodies the Design; or to offer to do any of the foregoing,

If a Design Right is infringed the owner may be entitled to an injunction, and damages or an account of profits.

Orders may also be sought for the delivery up or destruction of infringing items.

A Patent will be infringed where a person does something in relation to the invention that falls within the scope of the Patent owner’s exclusive rights without consent.

In an action for infringement of a Patent, the owner or exclusive licensee may be entitled to an injunction, and damages or an account of profits.

An interlocutory injunction is an injunction granted before a trial of the action to ensure that the specified action does not take place pending the trial and the final determination of the rights of the parties.

When Courts decide whether to grant interlocutory injunctions, they must first be satisfied that there is a serious question to be tried, and then consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief sought.

When considering the balance of convenience, the Court will weigh up the inconvenience or injury which the Plaintiff would be likely to suffer if an injunction was refused against the injury which the Defendant would suffer if the injunction was granted. This generally involves inquiring in relation to whether damages would be an adequate remedy if the Defendant was not restrained from taking the action in respect of which the injunction was sought.

In actions for infringement of intellectual property Courts may grant either damages or an account of profits. These remedies are alternate not cumulative.

Damages are calculated to compensate a party for loss suffered as a result of another party’s breach of their intellectual property rights or a duty of confidence.

On account of profits is a discretionary remedy that a Court may order in appropriate circumstances. Where an order for an account of profits is made, the party is whose favour the order is made is entitled to recover a sum which represents that proportion of the other party’s profit which was fairly attributable to the infringement of the intellectual property right.

In actions for infringement of Copyright, Designs and Patents, Courts may refuse to order damages or an account of profits if the Defendant can show that they were an innocent infringer and were not aware of the other party’s intellectual property right or that their conduct would result in infringement (subject to some exceptions).

Search orders, also known as Anton Piller orders, are orders sought to preserve evidence needed to prove the party’ claim in circumstances where there is a real danger of destruction, concealment or removal of the evidence from the jurisdiction.

These orders compel a respondent to permit an applicant’s representatives and an independent supervising solicitor to enter, search, copy documents and remove property from the respondent’s premises for safekeeping.

Search orders are normally sought on an ex parte application, without notice to the respondent, because notice or service may prompt the destruction or disappearance of evidence.

In intellectual property infringement actions Anton Pillar orders may be sought to access premises for the purpose of searching for and taking custody of infringing copies of works or designs or other subject matter and documents relating to them.