As a general rule of thumb, trade marks cannot be altered. This ensures that the brand’s integrity remains intact. However, following the decision in the Scandinavian Tobacco Group v Trojan Trading Company case (STG case), the alteration of trade marks may now be allowed in certain circumstances. This article discusses how this decision affects the repackaging of goods and explains what you can do to maintain control of your trade marks.

Repackaging

Sometimes, the repackaging of goods includes altering its exterior packaging. In the STG case, Trojan repackaged Scandinavian Tobacco Group’s (STG) cigars for sale. They then reapplied STG’s cigar trade mark to comply with Australia’s plain packaging laws. The court ruled that this was lawful.

Often, goods are imported and presented in new packaging, creating the same issues as in the STG case. 

For example, often to include English translations, imported food products are re-packaged.

Why Weren’t Trojan’s Actions Trade Mark Infringement?

Infringement

A person infringes a registered trade mark if they use a mark that is substantially identical or deceptively similar to another registered trade mark in a similar class of goods.

In deciding whether two marks are substantially identical, they are compared side-by-side. Then, a legal professional will search for similarities or differences in their essential features.

Determining if another mark is deceptively similar is a little more complicated. Firstly, a legal professional compares the overall impression your logo and the other mark. If the average consumer will likely be confused, the trade mark is deceptively similar. 

In this case, the original trade mark was infringed upon by Trojan’s re-packaging of the STG cigars. However, Trojan was able to successfully defend their infringement of the mark using the defence of consent.

Defence of Consent

If the owner of a trade mark has provided the infringer with consent to use the mark, it will no longer be considered infringement.

In the STG case, the court decided that any prior use of the STG trade mark by Trojan occurred with the owner’s consent. Therefore, this meant that the removal of the trade mark by Trojan was assumed to have been done with consent.

Consequently, the mark must have been applied or altered with the consent of the trade mark owner at some point in the past for the defence of consent to be upheld.

Subsequently, third parties such as suppliers or manufacturers can use the trade mark if they had the consent of its owner at some point in the past.

The defence of consent can also apply where a party obtains packaged goods with a trade mark applied to them by the registered trade mark owner. You would not be infringing on the trade mark when advertising those goods.

For example, if a clothing retailer advertised using the logo of one of the brands that they sell, trade mark infringement is unlikely.

What To Do if You’re Concerned About Improper Use of Your Trade Mark

Other Claims

If you are unable to prove trade mark infringement, other claims may be successful where a trade mark infringement claim is not. You may be able to argue misleading and deceptive conduct or passing off.

With regards to misleading or deceptive conduct, a person must not engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Passing off occurs when a person passes off their goods or services as those of another. By doing so, they falsely suggest that there is a connection with the other person’s business. 

For example, the new packaging may lead a consumer to believe that another party is responsible for owning the goods. If so, you could bring about a claim of misleading or deceptive conduct or passing off.

Put Up a Prohibition Notice

Trade mark owners are able to put a notice in place that prohibits specific actions by third parties. These actions may include:

  • re-packaging;
  • altering the goods; or
  • re-using the trade mark for other purposes.  

If you display a prohibition notice on your goods, a third party will not be able to claim that you consented to their actions.

Key Takeaways

After distributing your goods to third parties, it is essential to know how your trade mark can be lawfully used. Some measures you can take include:

  • making a claim of misleading and deceptive conduct or passing off to prevent others from re-packaging your goods; or
  • displaying a prohibition notice on your goods.

If you have any more trade mark questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
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