Many businesses register intellectual property rights to protect their products, logos and brands. You might think that once the IP rights have been registered, there is nothing further to do, however this can be a trap with serious ramifications.
As discovered in a recent case involving a large well-known US camper van company, failing to take action on IP infringement can be costly.
The case involved an Australian business utilising the name and a similar logo to that of the US company. The Australian business began using the name and logo in the late 1970s, however it wasn’t until 1985 that the US company discovered the “copy-cat”.
Trading on the goodwill and reputation of another business is known as “passing off”. Passing off is usually designed to mislead and deceive consumers, and is also a breach of IP rights – by registering a trademark, the owner has a legally enforceable right to exclusive use of the trademarked item.
In this case, the passing off was clear. The big issue was why it took the US company until 1992 to challenge the use of its name and branding by the Australian business, and until 2010 to commence court proceedings.
Whilst the US company submitted various reasons for its delays, ultimately the court found that the US company had “sat on its hands” and done nothing to prevent the Australian competitor from continuing to use its name and logo. The court therefore allowed the Australian business to continue using the name and logo.
The case is a warning to all holders of IP that registration does not of itself provide protection – IP owners need to regularly review any potential infringements of their intellectual property, and act quickly if there is any sign of passing off.
If you need assistance with IP protection, contact the team at Everingham Solomons. We are well equipped to assist you with all your intellectual property enquiries because Helping You is Our Business.
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