NSW Trade Mark and Domain Name Cease & Desist

[Paradigm]

We have had accepted and advertised by IP Australia two Trade Mark applications under Class 45, "Providing information regarding political issues"
We have received a Cease and Desist letter from a Trade Mark owner who owns a word that comprises the first word in both our applications being two word Trade Marks.
The Trade Marks registered by the author of the letter are in classes 3, 9, 7 and 11, and there is an application for the same single word under class 35 which post dates the acceptance dates of our two applications.

In respect of the domain names, all names we have registered are ".org" and ".org.au" based around the registered business names we hold with the same two word titles as our Trade Mark applications.

As our endeavours are of an organisational and non-commercial nature, is there any validity with the Cease & Desist letter from an business that deals in commercial products in the wholesale and retail spectrum?

 

[Kim Walters]

You should consider legal advice to properly assess whether the other side has grounds to allege infringement.

In Australia, a "cease and desist' letter constitutes a threat on the basis that it asserts that the complainant has a right. It is important to work out whether there has actually been an infringement of rights. This is important because someone who makes threats without grounds can in itself give rise to a cause of action on the basis of "groundless threats".

There are various defences available under the Trade Marks Act in response to claims of trade mark infringement.

 

[Paradigm]

The author of the C&D letter was from the Trade Mark owner, not a lawyer. The single word trade mark is not unique, there are other trade marks in other classes with the same single word that pre-date by 30 years registered to other parties. There is also another two word trade mark, with the disputed word as the first word, that post-dates the trade mark registered by the complainant. The word itself is generic in nature, being in common use for more than 1000 years.

 

[Kim Walters]

Groundless threats of legal proceedings apply to a "person" under the Trade Marks Act. A person who makes groundless threats can be exposed to a counter-claim and be restrained by the Court from making them.

The author of the C&D letter needs to demonstrate infringement. You need to establish whether this is a groundless trade mark threat or not.