Trade mark infringement is a significant legal issue that can undermine a brand’s identity and market value. In Australia, trade mark law is primarily governed by the Trademarks Act 1995 (Cth), which establishes the legal framework for the registration, protection, and enforcement of trade marks. Understanding the intricacies of trade mark infringement is crucial for businesses to protect their intellectual property and to navigate potential disputes effectively.
What Constitutes Trade Mark Infringement?
Trade mark infringement occurs when a person or entity uses a sign that is substantially identical or deceptively similar to a registered trade mark, without authorization, in relation to the goods or services for which the trade mark is registered. The following elements are essential to prove infringement-
1. Registered Trade Mark:
The trade mark must be registered with IP Australia, the government agency responsible for intellectual property rights. Unregistered trade marks do not have the same statutory protection and may only be protected under common law principles, such as “passing off,” or under section 18 of the Australian Consumer Law, which prohibits misleading or deceptive conduct.
2. Substantial Identity or Deceptive Similarity:
The alleged infringer’s sign must be either:
A. Substantially identical:
Almost identical to the registered trade mark, determined by a side-by-side comparison; or
B. Deceptively similar:
So similar that it is likely to mislead or confuse consumers about the origin, sponsorship, or endorsement of goods or services. This is assessed using the “imperfect recollection” test, focusing on the overall impression of the mark, rather than a direct comparison.
3. Use in the Course of Trade:
The infringing use must occur in a commercial context. Personal or private use of a trade mark, without a business motive, is typically not considered infringement, the concept of “use in the course of trade” is broadly interpreted. It includes promotional activities like advertising and offering goods or services for sale, even if actual sales have not yet occurred.
4. Goods or Services Covered by the Trade Mark:
The infringing sign must be used in connection with goods or services that are identical or similar to those covered by the trade mark registration. However, for well-known trade marks, infringement can occur even if the infringing sign is used on unrelated goods or services, as long as the use suggests a connection with the trade mark owner and may damage their interests ( section 120(3) of the Trade marks Act).
Defenses Against Trade Mark Infringement in Australia
Under the Trade marks Act 1995 (Cth), several defenses are available to those accused of trade mark infringement. These defenses ensure that the rights of trade mark owners do not unfairly restrict the legitimate use of words, symbols, or marks by others. According to Sections 122 to 124 of the Act, a person may use a trade mark without infringing the rights of the registered owner under certain circumstances:
1. Use of Own Name or Business Name:
A person can use their own name, the name of their place of business, or the name of their predecessor. This defense applies if the use is in good faith and does not mislead the public or cause confusion (Section 122(1)(a)).
2. Descriptive Use:
A person can use terms in good faith that describe the characteristics of the goods or services, such as their quality, quantity, value, geographical origin, or time of production. This defense applies when the use is descriptive and does not aim to exploit the trade mark for unfair commercial gain (Section 122(1)(b)).
3. Indication of Intended Purpose:
The trade mark can be used in good faith to indicate the intended purpose of the goods or services, particularly in cases where the goods are accessories, spare parts, or components of a larger product (Section 122(1)(c)).
4. Comparative Advertising:
Using a trade mark in comparative advertising is permitted, provided that it is done in good faith and does not deceive or mislead consumers. Comparative advertising allows businesses to reference a competitor’s trade mark to highlight differences or advantages of their own products or services (Section 122(1)(d)).
5. Authorized Use:
The exercise of a right to use a trade mark granted under the Act is also a valid defense. This includes any situation where the person has been granted permission by the trade mark owner or an authorized user to use the mark (Section 122(1)(e)).
6. Potential Registration by the Defendant:
If a court believes that the defendant would likely obtain registration of the trade mark in their name if they were to apply for it, this can be a defense against infringement (Section 122(1)(f)).
7. Condition or Limitation on Registration:
When a trade mark is registered with specific conditions or limitations, any use that falls outside those conditions or limitations is not considered infringement. This defense protects the rights of those whose use of the mark is within the permitted scope of the registration (Section 122(1)(g)).
8. Disclaimer Application:
Where there is a disclaimer on part of the trade mark, a person cannot infringe by using that disclaimed portion. This applies when a part of the trade mark is excluded from protection (Section 122(2)).
9. Consent of the Trade mark Owner:
If the registered owner of the trade mark, or their authorized user, has consented to the use of the mark, there is no infringement. This also includes situations where the trade mark has been applied to goods or services by or with the consent of the trade mark owner (Section 123).
10. Prior Continuous Use:
If an alleged infringer can establish that they have been using an unregistered trade mark continuously in the course of trade, in relation to similar goods or services, from a time before the date of registration or the first use of the registered trade mark, this constitutes a defense. This defense requires consistent, documented use of the mark (Section 124).
11. Reasonable Inquiry Defense:
If, at the time of use, reasonable inquiries were made, and a reasonable person would have concluded that the trade mark had been applied to the goods or services with the consent of the registered owner or someone authorized to permit such use, there is no infringement (Section 122A). This defense is less likely to succeed if the trade mark is well-known or easily discoverable.
Legal Remedies for Trade Mark Infringement
If trade mark infringement is established, several legal remedies may be available to the trade mark owner:
1. Injunctions:
A court order to prevent the infringer from continuing to use the trade mark. Injunctions are discretionary remedies and may be granted on an interim or permanent basis, depending on factors such as the strength of the case, potential harm to the trade mark owner, and whether damages are adequate compensation.
2. Damages:
Compensation for any financial loss suffered by the trade mark owner due to the infringement. Damages can include lost profits, reputational damage, and other economic losses.
3. Account of Profits:
An order requiring the infringer to hand over any profits made from the unauthorized use of the trade mark.The trade mark owner must choose between seeking damages or an account of profits, but cannot claim both.
4. Delivery Up or Destruction:
A court may order the infringer to deliver up or destroy infringing goods, packaging, or materials bearing the infringing mark.
Proving Trade Mark Infringement: Key Considerations
To succeed in a claim for trade mark infringement, the trade mark owner must establish the following:
1. Ownership:
Proof that the trade mark is registered and owned by the claimant.
2. Unauthorized Use:
Evidence that the infringer has used the mark without permission.
3. Likelihood of Confusion:
Demonstrating that the infringer’s use of the mark is likely to cause confusion among the relevant public. This often involves an assessment of the target market, the distinctiveness of the trade mark, and the similarities between the goods or services.
Challenges and Complexities in Trade Mark Infringement Cases
Trade Mark infringement cases can be complex and time-consuming. Some of the difficulties or challenges that may arise includes:
1. Proving Deceptive Similarity:
Establishing that the alleged infringer’s mark is deceptively similar can be subjective and often requires expert testimony, consumer surveys, or market analysis.
2. Establishing Market Confusion:
It is necessary to demonstrate that the infringing use will cause confusion among customers and the courts will evaluate the mark’s repute, the nature of the products or services, and the similarity of marketing channels.
3. Balancing Defenses and Fair Use:
Defenses like “fair use” and “descriptive use” can complicate proceedings, as they require careful assessment of the alleged infringer’s intent and the context of use.
Conclusion
Trade Mark infringement in Australia is a complex area of law requiring a nuanced understanding of the Trademarks Act 1995 (Cth) and associated case law. Businesses must be vigilant in protecting their trademarks by ensuring they are properly registered, monitored, and enforced. However, those accused of infringement should carefully evaluate their defenses and seek legal advice to navigate these disputes’ complexities. Effective trade mark protection requires a proactive approach and a thorough understanding of both the rights and obligations under Australian law. For tailored guidance on trade mark protection and enforcement, consider consulting a qualified IP attorney.
Why Choose LexGeneris?
At LexGeneris, our patent and trade mark attorneys have backgrounds in engineering, science, and law. We specialize in creating, registering, and protecting intellectual property across various technologies. Our expertise includes comprehensive services surrounding patents, trade marks, and designs. With offices in Perth, Australia, and Bangalore, India, we are well-equipped to meet with clients worldwide.
