When is Using a Registered Trade Mark Not Infringement in Australia? 

As a business owner, you should be aware that your trade marks are one of your most valuable assets. A registered trade mark provides you with exclusive rights. You can enforce this against any other business that may infringe your trade mark. As such, trade mark registration is a vital step in protecting your brand. If you happen to come across a brand that is improperly using your registered trade mark, this article will help you determine whether their use of your trade mark constitutes ‘trade mark use’ and, if so, whether or not that use constitutes trade mark infringement.

What is a Trade Mark?

A trade mark is a sign or symbol your business can use to represent goods and services in the marketplace. Trade mark registration is not compulsory, and some businesses choose to use their trade marks unregistered. However, registration provides the owner with exclusive rights. These can be vital in protecting your brand from competitors improperly using your trade marks. If a third party improperly uses your trade mark in relation to the same or similar goods and services claimed in your registration, this may be trade mark infringement.

Has Trade Mark Infringement Occurred?

What is Trade Mark Use?

For example, selling hardware goods under the business name BUNNINGS would be trade mark use. Consumers and third parties would believe that they are purchasing their goods from a brand called BUNNINGS. However, suppose a third party were to use the word BUNNINGS on their website. They do so to notify consumers that their product is stocked at BUNNINGS. Accordingly, this would not be trade mark use.

Same or Similar Goods and Services

Once you have established that a third party is using your sign or symbol as a trade mark, the next step is to consider how they are using it. If they are using it in relation to the same or similar goods and services that you claimed in your registration, a court may consider this infringement. 

For example, the word DOVE is the name of a soap company and also a chocolate brand. Both businesses have trade mark protection over this word in relation to different classes of goods. They can therefore co-exist without any infringement issues. However, if a subsequent business tried to use the word DOVE in relation to soap or chocolate products, they would likely infringe on an existing trade mark.

What is Not Infringement?

Some instances where trade mark use is not infringement include:

• use of a person’s name;
• use in good faith of descriptive terms that describe a certain characteristic of goods/services, such as quality, purpose, value, geographical origin, etc.;
• use in good faith to indicate the intended purpose of goods or services;
• use for comparative advertising;
• where the owner gives permission to use the trade mark;
• if the court is of the opinion that the person would obtain registration of the trade mark if they applied for it;
• where the use falls within a limitation or condition on the registration;
• if a disclaimer applies to part of the trade mark, a person does not infringe the trade mark by using that part of the trade mark;
• where a person uses an unregistered trade mark that is substantially identical or deceptively similar to a registered trade mark, and the person can establish the use of the mark that pre-dates the first-use date of the registered trade mark;
• where at the time of use, reasonable inquiries were made by the user in relation to the trade mark, and a reasonable person would have concluded that the trade mark had been applied to, or in relation to, the goods with the consent of an authorised person, such as the owner of the trade mark.

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Key Takeaways

If you are concerned about someone else using your registered trade mark, as a first step, consider whether trade mark infringement has occurred. This includes considerations such as whether the use is ‘trade mark use’ and whether the other party’s mark is in relation to the same or similar goods and services. There are also, however, a number of instances in which trade mark use does not amount to infringement. 

If you would like assistance with determining whether your trade mark has been infringed, LegalVision’s experienced IP Lawyers can assist as part of our 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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