Trade Marks Act 1998 · 2020 Revised Edition · Part 3 · Rights and Remedies of Proprietor of Registered Trade Mark
35. Remedy for groundless threats of infringement proceedings
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Where a person threatens another with proceedings for infringement of a registered trade mark other than —
trade mark
“trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
the application of the mark to goods or to material used or intended to be used for labelling or packaging goods;
the importation of goods to which, or to the packaging of which, the mark has been applied; or
the supply of services under the mark,any aggrieved person may bring proceedings for relief under this section.
The relief which may be applied for is any of the following:
a declaration that the threats are unjustifiable;
an injunction against the continuance of the threats;
damages in respect of any loss the person has sustained by the threats.
The claimant is entitled to the relief mentioned in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
If the defendant showed that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned, the claimant is nevertheless entitled to relief if the claimant shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section.
Nothing in this section renders an advocate and solicitor liable to an action under this section in respect of an act done by him or her in his or her professional capacity on behalf of a client.