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Intellectual property (IP) is an important asset to your business. It makes sense that many businesses take preventative steps to stop people from infringing their IP. But you may be unsure whether someone’s unauthorised use constitutes trade mark infringement under Australian law. A court case between AGL and Greenpeace demonstrates the importance of understanding trade mark infringement. In this article, we will outline what you should consider before alleging trade mark infringement, analysing the decisions that came from this court case.

AGL v Greenpeace Australia Pacific Limited

Background

AGL took Greenpeace to court over alleged copyright and trade mark infringement. This was concerning posters created by Greenpeace that used AGL’s logo. The alleged infringing conduct by Greenpeace consisted of various visual media on a variety of platforms using AGL’s logo next to the tagline ‘Australia’s Greatest Liability’. 

Greenpeace argued that their use of AGL’s logo did not amount to trade mark infringement because they were not using the logo as a trade mark (i.e., to identify the source of goods and services). Ultimately, the court agreed with this argument.

Why Did They Agree?

Your registered trade mark will be infringed if someone uses it concerning the goods or services covered by your registration. In this case, Greenpeace had not used the logo concerning the goods or services claimed. In the Court’s view, consumers looking at the banner advertisements or street posters would not consider them to be advertising or promoting AGL’s goods and services. Instead, the Court found that Greenpeace’s use of AGL’s logo provided what they considered factual information about the environment to Australian consumers. They also use the logo to criticise AGL’s conduct.

Potential Impact on Your Business

The AGL case reinforces a few points about trade mark infringement.

What Does a Trade Mark Provide?

A registered trade mark provides you with a monopoly to use the mark concerning the registered goods and services class. This means that, while you have the exclusive right to use a word or image, it will only ever be in relation to a finite list of goods and services. 

For example, you may have a registered trade mark for the word STUNNING LIGHTS concerning retail services and lights. However, if someone started using this mark concerning wine, an infringement claim may be difficult to establish.

When Should You Allege Infringement?

A successful infringement action will depend on how the mark was used. In general, there will be an infringement if someone uses it concerning the goods and services claimed under your registration. Infringement can also occur if someone uses the mark concerning associated goods and services.

For example, suppose if someone were to start using STUNNING LIGHTS concerning electrician services. In that case, you may have grounds to claim trade mark infringement.

Is Your Trade Mark Being Used as a Trade Mark?

A trade mark identifies a business and the goods and services provided by that business. In the AGL case, Greenpeace successfully defended the infringement action against them. This is because they were not using the mark to identify their goods or services. Instead, they were ‘critiquing’ the business that held the mark.

Consider this before you allege infringement. For example, has the other party used it as a trade mark (i.e., to identify and promote their business)?

Things to Consider When Applying for a Trade Mark

The case highlights numerous points in Australian trade mark law but fundamentally reinforces the importance of an accurate list of specifications. When you apply for a trade mark, you need to select a number of classes representing a group of associated goods and services. 

For example, class 9 covers software and electronic goods.

To help illustrate this point, consider your own business. For example, if you have a registered trade mark for your business name or logo, it should be registered concerning the goods and services you offer as part of your business. Then, suppose someone starts using a deceptively similar or substantially identical name or logo to promote their own business for the same goods and services covered by your registered trade mark. In that case, they may be liable for an infringement action.

In addition, an inaccurate list of goods and services leaves you potentially vulnerable to a third party using the mark concerning goods and services not covered by your application and filing an application for an identical mark concerning those goods and services, effectively blocking you from protection.

Future Goods and Services

If you are applying for your trade mark now, you may have plans to implement new goods and services that you have not started offering. This is fine, and if you have plans of implementing them within three years of filing your application, you should consider including them in your application. 

As long as you implement these planned goods and services within three years of applying, your mark will not be vulnerable to removal for non-use.

Key Takeaways

Trade marks are an important part of every business. You should make sure that you get it right the first time when you file your application. From the AGL and Greenpeace case, you should remember to register your trade mark for the goods and services that your business will use it in relation to. Infringement will occur if a trade mark is used as a trade mark in an unauthorised manner concerning the goods and services covered by the registration. You should ask a lawyer for their advice if you believe somebody is infringing on your trade mark. If you need help with an issue around trade mark infringement, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark class?

A trade mark class is a category of goods and services that you will register your trade mark under. Your trade mark will only be protected in the classes you register your trade mark under.

What does the AGL v Greenpeace decision demonstrate?

This case reinforces that trade mark infringement will only occur when the opposing party uses your trade mark concerning the class of goods and services you have registered your trade mark under. Infringement will also occur only if the other party is using your trade mark as a trade mark themselves.

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