These days, people are more aware of branding than they were a decade ago. With the rise of at-home entrepreneurs and the continued success of the influencer culture, more individuals are taking trademarks seriously. They are aware of their value as a creator and have realised that the Intellectual Property (IP) landscape is not exclusive to established corporations.

Now, you can see individuals working on perfecting their personal brands, from the typography of their content to the packaging of their products. They do this on top of the trademark application process. But, in the constantly evolving IP environment, this is no longer enough to guarantee the rights to the brand.  

How Wilful Infringement has Evolved

Wilful infringement is defined as the act of knowingly copying intellectual property claimed by another. It covers four intellectual property rights, as defined by IP Australia and

Patent – a legally enforceable right for a device, substance, method or process that’s new, useful, inventive or innovative

Design Right – the right to intellectual property that has something to do with a product or package’s shape, pattern, configuration and ornamentation

Copyright – a set of rights that apply to certain creative pieces such as text, music, audio recording, works of art, films, and computer programmes

Trademark – a set of rights that apply to a word, phrase, letter, number, picture, logo, sound, shape, smell and movement

This article focuses on the last. In trademarks, traditionally, wilful infringement occurs when a third party uses a trademark owner’s identifier to make profits for themselves. When someone is caught in this act, they can be sued for damages by the owner, even if the accused acted in good faith.

Recently, the definition of wilful infringement has changed. Spurred by legal battles across the globe, the bar for what constitutes this illegal act has been lowered. Learn about the landmark case that has caused this change to protect yourself and your brand from possible lawsuits.

The Case of Romag Fasteners, Inc. v. Fossil, Inc.

Fossil, Inc., the fashion design and manufacturing company, approached Romag Fasteners, Inc. for a deal to use the latter’s magnetic fasteners in Fossil’s leather goods. Romag agreed on the basis that the fasteners would be bought directly from them. However, Fossil’s manufacturing plant in China chose to use counterfeit magnetic fasteners and claimed these were authentic.

Initially, although the lower court ruled in favour of Romag, they declared that Fossil merely acted callously and not wilfully, significantly reducing the award granted to Romag. When the case was brought to the Supreme Court, however, it ruled in favour of Romag, awarding them the full remedies dictated for wilful infringement damages. It held that Romag did not have to provide the courts with proof of Fossil’s wilful misconduct.

How Wilful Infringement Affects Trademarks

In cases where another party infringes on a trademark owner’s rights for profit, proof of wilfulness is no longer required. This is because wilfulness is an express requirement in trademark dilution. When a word, phrase, symbol or logo is widely used as an identifier to a specific brand, using it for your own brand makes you guilty of wilful infringement. On the other hand, if you own the trademark, you can protect your company from parties that utilise it for profit.

The landmark decision in the Romag v. Fossil case is important to keep in mind as you establish your brand. With the digital landscape providing entrepreneurs with a level playing field, it has become easier to reach consumers. But it has also become easier for other parties to profit from your hard work. As you build your brand, make sure you are protected on all fronts. Understand your rights as a trademark owner to know when someone is practicing trademark dilution with your brand. At the same time, avoid situations or deals that may put you at risk of a wilful infringement lawsuit.

Protect Yourself and Your Trademark with Pinnacle TMS

Pinnacle TMS is your partner in protecting your trademark. We provide professional services to make the process of applying and registering for a trademark easy and fast. We have a team of experts who use their knowledge and skill to help you throughout the process.

Get in touch with us for more information. Call +(61) 2 9520 4366 or send an email to