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Some of the most creative advertisements nowadays use pictures that contain a registered trade mark. You may be the owner of a registered trade mark. If so, naturally you can use pictures that contain your trade mark. After all, you have the exclusive rights to use your trade mark. However, if you want to use a registered mark owned by another person or business, you should get their permission. Otherwise, you could face legal action for infringing on their intellectual property rights. This article explains how you might obtain permission to use a registered trade mark and avoid trade mark infringement. Further, this article also discusses certain instances where you can use a registered trade mark without the owner’s authorisation.
Get Permission to Avoid Infringement
The owner of a registered trade mark has exclusive rights. These exclusive rights allow you, as the owner, to use and authorise others to use your trade mark. Notably, this right only applies in relation to the goods and services in which your trade mark is registered.
You may be tempted to use a photo that contains a registered trade mark without the owner’s permission. However, you will likely be committing trade mark infringement.
Under the Trade Marks Act, trade mark infringement can arise if you use a sign:
- that is substantially identical with or deceptively similar to a registered trade mark; and
- in relation to the specified goods and services of that registered trade mark.
To avoid committing trade mark infringement, you should seek permission from the owner of the registered trade mark. Fortunately, the contact details of registered trade mark owners are on the IP Australia Trade Mark Search platform. You can search the Register for the trade mark you intend to use and find the owner’s details attached.
Exceptions to Infringement
It is possible that you may not be able to obtain permission to use a registered trade mark. This being said, there are some limited exceptions where you can use the trade mark without committing trade mark infringement.
Trade Marks That Contain Your Name
Under the Trade Marks Act, you can use your own name without the permission of the trade mark owner. This rule also applies if you wish to use the name of your business.
For instance, a photo may contain a registered trade mark, but that trade mark may contain your family name. In this event, you may be able to use the photo without the owner’s permission. Likewise, if the trade mark contained your business name, you likely could use the photo without the owner’s permission.
However, you must use the trade mark that contains your name or business name in “good faith”. Good faith requires:
- an honest belief that no confusion would arise by using the picture that contains the registered trade mark; and
- the absence of an intention to take advantage of the reputation of the business that the registered trade mark represents.
Trade Marks That Describe Your Products and Services
You can use a registered trade mark without the authorisation of its owner if you are using it to describe the:
- kind, quality, quantity, value or geographic origin of your business’s goods and services; and
- time your goods were produced or the time your services were given.
Again, you must use a trade mark that describes your goods and services in good faith. Importantly, a Court would determine whether you acted in good faith based on your objective conduct. The Court will not look at what you believed when you used the trade mark.
Trade Marks That Indicate the Purpose of Your Products and Services
If the trade mark indicates the purposes of your goods and services, you can use it without the owner’s permission.
Importantly, the exception applies where the use of the registered trade mark does not create a mistaken or misleading impression. Again, to satisfy this exception under the Trade Marks Act, you must use the trade mark in good faith.
Trade Marks for Comparative Advertising
You may use a registered trade mark without the owner’s permission for the purposes of comparative advertising. This is partly because comparative advertising helps distinguish the goods and services of your business from another. In this sense, comparative advertising has a similar function to that of a registered trade mark. Both help to differentiate your business within the market.
However, it is important that you do not defame your competitor when using your competitor’s trade mark. Likewise, it is crucial that you do not mislead and deceive consumers when using your competitor’s trade mark. Both of these principles you should keep in mind when you undertake comparative advertising. Otherwise, you could find yourself facing unwanted legal action for contravening AUS Consumer Law and/or Trade Practice law.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Before you use a picture that contains another person’s or business’ registered trade mark, you should seek that person’s or business’ permission to use the image. This being said, you may be unable to obtain authorisation. If this is the case, there are certain exceptions when you can use the image without committing trade mark infringement. These include using a trade mark:
- in good faith if it contains your name or your business name, describes your products and services, or indicates the intended purpose of your products and services; and
- for the purposes of comparative advertising.
If you would like help determining whether you can use pictures that contain a registered trade mark, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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