NSW Trademark Infringement - Best Course of Action?

[Cruiser]

Hi,

I write a blog/information website relating to the ongoing modification of a type of motor vehicle. As I perform modifications, I post an article and video detailing that modification.

One page on the site deals with engine performance chips, predominantly the brand I have installed myself. However, as background information it also mentions a couple of other types of chip, explains how those types of chip operate, some pros and cons and then gives two or three example brands that operate in that manner.

I received a rather terse phone call today from the owner of one of the chip companies I mention, claiming by mentioning their product I am infringing their trademark and demanding that I remove all references to their brands. They have given me 48 hours to comply before they "speak to their lawyer".

I have checked s120 and 122 of the Trade Marks Act, and it appears that such use is acceptable under s.122(1)(b)(i) and (1)(c).

Speaking to others in the industry today, it seems this company has a history of threatening legal action on bloggers, forums etc that don't write in glowing terms about their products.

My first thought is to just ignore them, or write them an email asking for more details about what they consider the infringement to be. Could I get some educated opinions on where I stand, and the best course of action?

Many thanks.

 

[Kim Walters]

Hi Cruiser

Assuming the complainant has a registered trade mark, the requirements for infringement under the Trade Marks Act broadly are:

i. use as a trade mark;

ii. trade marks substantially identical or similar;

iii. in relation to goods/services for which the trade mark is registered.

The manner of your use must be more than descriptively to amount to use as a trade mark. If you have not used the trade mark as a "badge of origin", that is, to indicate a connection in the course of trade between yourself and the goods, then, there is no infringement.

A "cease and desist" complaint should be considered as to its merits, and a response made in terms of what defences you have under the legislation. This will inform the complainant that their complaint has been taken seriously and their concerns will be addressed and not ignored.

 

[Cruiser]

Thank you Kim.

I'll send them an email requesting a more detailed complaint, and I'll contact your office if they reply with a cease and desist.