Commercial Litigation News

Trade Mark Infringement

 When is a registered trade mark infringed?

In accordance with section 120 of the Trade Marks Act 1995 (Cth), a person infringes a registered trade mark if they use as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark:

  1. in relation to goods or services in respect of which the trade mark is registered;
  2. in relation to goods of the same description as those in respect of which the trade mark is registered, or services that are closely related to those goods; or
  3. in relation to services of the same description as those in respect of which the trade mark is registered, or goods that are closely related to those services.

This article does not deal with infringement of an unregistered trade mark.

Use as a trade mark

A trade mark is a sign that is used or is intended to be used, to distinguish a particular trader’s goods or services from the goods or services of another person. The purpose of a trade mark is for it to be used as a ‘badge of origin’, or more specifically a sign that indicates the commercial origin of the goods or services.

The registration of a trade mark provides the owner with the exclusive right to use the trade mark in Australia in relation to the particular goods or services for which the mark is registered. For another trader to infringe that exclusive right, they must have used the registered mark as a trade mark.

Where the registered trade mark has not been used in a way that constitutes use as a trade mark, for example it has been used descriptively rather than in an attempt to indicate the commercial origin of the goods, there will be no infringement of the registered trade mark.

Substantially identical

To determine whether an allegedly infringing trade mark is substantially identical to a registered trade mark will involve a side-by-side comparison of the two trade marks.

This is a high threshold to meet and will require an extremely high degree of similarity between the two trade marks. It therefore usually has limited application except in cases of blatant infringement, with most cases instead dealing with the issue of deceptive similarity.

Deceptively similar

A trade mark will be deceptively similar to a registered trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion.

The test that has been applied by Courts when assessing deceptive similarity involves consideration of the imperfect recollection of the two trade marks. This is a much less precise test than determining whether two marks are substantially identical, as it does not involve a side-by-side comparison.

Defences to trade mark infringement

A person will not infringe a trade mark in certain circumstances, for example:

1. they use their name, the name of their place of business, the name of their business’s predecessor or the name of the predecessor’s place of business, where that use is in good faith;

2. they use the sign in good faith to indicate:

a. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
b. the time of production of goods or of the rendering of services;
c. the intended purpose of goods or services;

3. for the purposes of comparative advertising;

4. where the Court considers that the alleged infringer would be entitled to obtain its own registration for the allegedly infringing trade mark if they were to apply for it (eg. where the alleged infringer can establish prior concurrent use, that is use prior to the priority date of the registered trade mark they are alleged to have infringed).

Remedies for infringement

Where infringement has been established and no defences have been successfully raised, the Court may:

  1. grant an injunction to prevent continued infringement;
  2. award damages or an account of profits.

Depending on the circumstances such as the flagrancy of the infringement and the conduct of the infringer, the Court may also add an additional amount to the assessment of damages.

Tips for trade mark owners:

  • Applying for and obtaining a registered trade mark will provide much stronger protection than attempting to rely on an unregistered trade mark. The Australian trade mark system operates on a first to file basis, so seeking protection as soon as possible is advisable.
  • A trade mark owner should always exercise caution when accusing third parties of infringing their trade mark as the recipient of such a demand may be entitled to apply to the Court for a declaration that the demand constitutes a groundless threat.
  • The owner of a trade mark may have other causes of action against an alleged infringer even if they do not have a trade mark registered under the Trade Marks Act 1995, for example passing off or misleading and deceptive conduct. These actions will be discussed in a separate article.
  • Trade mark owners must ensure they protect their registered trade mark or it may become vulnerable to removal.
  • Whilst there is no obligation to do so, owners of registered trade marks may display the ® symbol next to the trade mark to signify that the trade mark has been registered. It is an offence for a person to represent that a trade mark is registered in Australia when they know or have reasonable grounds to believe that it is not.

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 27 June 16