What Are The Best Defences Against Trade Mark Infringement In Australia?

As a business owner, you might inadvertently infringe on someone’s trade mark, leading to a court case. When faced with trade mark infringement cases, it’s crucial to understand how to defend yourself in a court of law.

In this article, we’ve highlighted the best defences against trade mark infringement. They include the use of a name in good faith, for comparison, or to describe goods/services. Read on for a better understanding of each defence.

It’s essential to note that the application of each defence depends on a case-by-case basis. That’s why it’s very important to consult an expert trade mark lawyer to find the best defence for you or your business.

What Is Trade Mark Infringement?

Let’s start with the basics before discussing trade mark infringement defences. First, what’s a trade mark? According to IP Australia, a trade mark is an intellectual property that differentiates your brand from others. If registered, it protects your brand and prevents others from using your trade mark.

Next, what is trade mark infringement? The Trade Marks Act 1995 (Section 120) describes the actions defined as trade mark infringement. According to the act, trade mark infringement occurs when a party uses a sign identical or deceptively identical to a registered trade mark without authorisation.

According to the Trade Marks Act 1995 (Section 20), the registered owner of a trade mark has exclusive rights to use or authorise others to use the trade mark. If someone uses the trade mark without seeking authorisation, the owner has the right to obtain relief.

If you/your company receives a letter of demand seeking relief for trade mark infringement, you can use the defences we’ve discussed below.

5 Best Defences To Trade Mark Infringement

While the defences to trade mark infringement discussed in the section below can help you, seeking legal assistance when dealing with trade mark issues is advisable. Section 122 of the Trade Mark Act 1995 describes the actions that don’t lead to infringement.

1. Use Of A Name In Good Faith

In this defence, you convince the court that you acted in good faith, i.e., acting honestly. You don’t infringe a trade mark if the trade mark is:

  • Your name or the name of your business’s location
  • The name of your business’s predecessor or the location of your predecessor’s business

Assuming your name is Ford, and you use the business name “Ford Car Dealership.” You can use the “good faith” defence to argue that you didn’t infringe Ford’s trade mark.

If you have a business called “Bright Shoemakers” in Bright, Victoria, you can establish that you didn’t infringe the trade mark “Bright Shoemakers.” You must convince the court that you used the name in good faith for this defence to work.

2. Use Of Trade Mark To Describe Goods Or Services

Trade mark infringement also doesn’t occur if you use a trade mark sign in good faith to describe:

  • The characteristics of the goods/services: These include the geographical origin, quality, quantity, value, or type of the product/service.
  • The time the services were rendered or goods produced

You must prove that you used the trade mark for descriptive purposes only and not to benefit from the trade mark owner’s reputation.

3. Use Of Trade Mark To Indicate The Purpose Of Goods Or Services

Another defence to trade mark infringement is when you use a registered trade mark in good faith to describe the intended purpose of a product/service. This defence mainly applies when dealing with spare parts or accessories designed for goods/services of a registered trade mark.

For example, you can legally use the trade marks of smartphone brands if you sell/manufacture smartphone accessories like screen protectors. You must prove that the use of the trade mark doesn’t deceive customers that you’re the owner of the used sign.

Use terms like “our screen protector is compatible with Samsung Galaxy” to avoid being sued for trade mark infringement.

4. Used The Trade Mark To Make A Comparison

In this defence, you can establish that you only used the trade mark for comparative advertising. It’s not a trade mark infringement if a party uses the mark to compare products/services with others. For example, if Samsung advertises its camera has better resolution than Apple’s iPhone.

While it might not be an infringement, it can lead to other legal issues related to the Competition and Consumer Act 2010. When using comparative advertising, you should get expert advice from an experienced commercial lawyer to avoid legal issues.

5. The Trade Mark Was In Prior Use

If you started using the “infringed trade mark” before the other party registered or started using it, you can use that for your defence. However, you must prove that the trade mark was indeed in prior use before another party registered it.

Other Possible Defences To Trade Mark Infringement

Besides the five defences we’ve discussed above, you can also use the following defences when faced with trade mark infringement charges.

  • The use of the trade mark doesn’t infringe the owner’s exclusive rights due to certain conditions or limitations.
  • You used the trade mark with the consent of the mark’s registered owner.
  • The “affected party” could obtain the trade mark’s registration if they apply for it.
  • The trade mark is subject to disclaimers, conditions, or limitations.

Do You Have An Issue With A Trade Mark Infringement & Need Help? Talk To Aditum Lawyers

Dealing with trade mark issues requires a deep understanding of commercial law. That’s why engaging with expert intellectual property lawyers is advisable to help you navigate the complexities of trade marks and other intellectual properties.

If you need help with trade mark issues, contact Aditum Lawyers for expert assistance. Fill out our contact form or contact 1300 234 886 to speak to one of our highly skilled trade mark lawyers.

Resources & Further Reading

  1. https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks
  2. https://www.business.qld.gov.au/running-business/risk/ip/types/trademarks/infringement
  3.  http://classic.austlii.edu.au/au/legis/cth/consol_act/tma1995121/
  4. https://www8.austlii.edu.au/cgi-bin/viewdb/au/legis/cth/consol_act/caca2010265/

Disclaimer: The information provided in this article is for general informational purposes only and should not be construed as legal advice. Consult with a qualified commercial lawyer for personalised advice regarding your specific situation.