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Trade Mark Infringement & Defences

1. Exclusive Rights Granted Upon Registration
2. Types of Infringement
   1. Same Goods/Services
   2. Same Description/Closely Related Goods or Services
   3. Unrelated Goods Where Trade Mark is Well-Known
   4. Examples of well-known trade marks
3. General Elements of Trade Mark Infringement
   1. Use
   2. Substantial Identity and Deceptive Similarity
4. Types of Trade Mark Dilution
   1. Blurring
   2. Tarnishment
   3. Anti-dilution
5. Prohibition of Certain Acts
6. Defences to Trade Mark Infringement
   1. Exhaustion / Consent
   2. Prior Use
7. Rectification
8. Cross Claims to Trade Mark Infringement
9. Remedies

Trade mark infringement occurs when a defendant uses a registered sign as a mark within the course of trade in a way that attempts to distinguish their goods or services.

Not all uses of registered trade marks will be infringements. Uses which merely refer to a product or brand or other descriptive uses of a trade mark are not going to be infringements unless they are used in a way that amounts to use as a trade mark. This means that infringement only occurs if the sign is used in a way that seeks to distinguish products or services.¹

This video by Nicolas Suzor provides an overview of The Trademark Infringement Framework.

Exclusive Rights Granted Upon Registration

Registration gives the registered owner the exclusive right to use the trade mark or authorise another person to use the trade mark in relation to the goods or services in which it is registered.² The trade mark owner also has the right to obtain relief if the trade mark has been infringed.³

A trade mark initially provides the owner with 10 years of protection, which can be renewed indefinitely as long as the trade mark is still in use.⁴ A registered trade mark becomes a type of property and may be licensed to others for use.

Types of Infringement

Section 120 of the TMA sets out the three ways in which a trade mark can be infringed. These are:

1. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered.⁵

2. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods of the same description or services that are closely related to registered goods; or services of the same description or goods that are closely related to registered services.⁶

3. A person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to a registered trade mark that is well-known in Australia, in relation to:⁷

• The goods or services are not of the same description or not closely related; and

• Because the registered trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods/services and the registered owner of the trade mark; and

• The interest of the registered owner are likely to be adversely affected.

In relation to well-known trade marks, take into account the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.⁸

Same Goods/Services

Infringement may occur when an alleged infringing mark is used in the same class of goods or services as the registered mark.⁵ This type of trade mark infringement is known as ‘vanilla’ infringement, where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to the same goods or services for which the trade mark is registered. For example, the registered trade mark is used with respect to cola flavoured drink and the alleged infringing mark is used on cola flavoured drink. The onus is on the registered owner to show trade mark infringement.

For more information read Amanda Scardamaglia, ‘Storm in a Contour Bottle?’ (11 November 2010) Fortnightly Review of IP & Media Law, Edition 18.

Same Description/Closely Related Goods or Services

Infringement may occur where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to goods or services of the same description or goods or services that are closely related.⁶ Note this section also functions as an informal defence (see below). The onus is reversed so the defendant must prove a lack of likelihood of deception or confusion.

This subsection protects traders and the public from unscrupulous dealers who want to pass off a new product as someone else’s. It also protects against dilatation of the value of the trade mark by allowing others to use it as they like, but in different categories.

The principles of goods and services being of the same description or closely related are largely the same as those that apply in the context of TMA s 44. Goods will not be of the ‘same description’ if their sale under the same mark by different companies would not be likely to lead to confusion or deception. If the public would not expect the same business to supply both of the goods and/or services, then the two are unlikely to be considered closely related.⁹

In E & J Gallo Winery v Lion Nathan Australia Pty Limited⁹ Gallo Winery was the registered owner of the trade mark ‘Barefoot’ in relation to wines in Australia. Lion Nathan (Australia) started selling a specialty beer under the trade mark ‘Barefoot Radler’ from January 2008. Infringement was established as beer and wine were held to be goods of the same description.

Musidor BV v Tansing (t/as Apple Music House),¹⁰ concerned the applicant selling Rolling Stones bootlegs. The applicant made it plain in its advertising and get-up that the source of the origin of the goods was not authorised by the Rolling Stones band. The packaging of the discs expressly disclaimed a connection, stating that the recording “has not been authorised by the Rolling Stones group or their record company”. Held, the applicant was not using the words “Rolling Stone” as a trade mark. In other words, the applicant was not using the words to “indicate the source or commercial origin of the goods”. It was held that no infringement occurred.

In Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd,¹¹ ‘Duff’ beer, which took certain steps to disclaim association with The Simpsons, was still held to amount to infringement. Steps taken to dissociate the product from The Simpsons included the use of different get-up to the beer can depicted in the TV show, no express references to The Simpsons on the packaging, requests to retailers not to use The Simpson imagery with the product. However, there was no express disclaimer on the can. The court noted “a notable lack of any attempt to drive this message home to the “consuming public”.” The beer was an express reference to The Simpsons and therefore the “disclaimers” were not effective.

Unrelated Goods Where Trade Mark is Well-Known

Trade mark infringement may occur where the defendant is using a mark as a trade mark, which is substantially identical or deceptively similar to the registered mark, with respect to unrelated goods or services where the mark is well-known or famous.⁷

To establish this type of infringement the trade mark must be well-known in Australia; the person must use as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to or not closely related goods or services; because the trade mark is well-known, the sign must be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and for that reason, the interests of the registered owner are likely to be adversely affected.

To determine if a trade mark is well-known in Australia, one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. Generally, the mark will need to be a significant brand with interests in many different categories or an international company. If the reputation is not significant enough (i.e. if the business is really a niche trader and it is unlikely a consumer would think they produced a product in a completely different category), then this section is unlikely to apply. The onus is on the trade mark owner to establish that it is a well-known mark.

Examples of well-known trade marks

Whether goods are unrelated or not closely related is a question of degree. The less ‘unrelated’ the goods or services are, the more likely that trade mark infringement will be made out. The use must indicate a connection with the owner.¹⁵

This connection can arise:

• Statutory passing off: connection based on some actual deceit or confusion – the sign indicates the goods/services are connected with whoever owns the well-known mark with which the consumer is so familiar.

• Dilution protection: connection as to a mental association with well-known mark – whether the sign used by the defendant brings the well-known trade mark to mind and reminds the consumer of the well-known trade mark.

Finally, the owner’s interests must be adversely affected. Usually it is quite easy to show harm at least by arguing their capacity to use, or distinguish their items has diminished due to the defendant’s use of the mark. Makes it harder for the trade mark owner to expand its market. Harm can occur in two ways:

• Statutory passing off: lost opportunity to licence, loss of custom etc (damage element in passing off).

• Dilution protection: dilution of the well-known trade mark.

General Elements of Trade Mark Infringement

Use

Not all use constitutes trade mark infringement. A person will only infringe a trade mark if they ‘use’ a protected mark as a trade mark – a defendant must use a protected mark or very similar mark in the course of trade as an attempt to distinguish their goods or services from others.¹⁶ An infringement will not be made out if a mark is used but not used to distinguish. The alleged infringing trade mark must be used or intended to be used as a trade mark in the course of trade – to distinguish one person’s goods/services from another.¹⁷ The trade mark must be used or intended to be used upon, or in physical or other relation to, the goods or services.¹⁸

A registered trade mark is likely to amount to use as a mark if the manner in which it has been employed does not serve some other purpose – it is a descriptive term, it serves some functional requirement or to communicate some other message. Ordinarily, the use of an invented word or words will amount to use as a trade mark but not always – even an invented word or words used out of context can be taken by consumers as suggestive of some quality other than commercial origin or descriptive to some degree.

Substantial Identity and Deceptive Similarity

The phrases ‘substantial identity’ and ‘deceptive similarity’ hold the same meaning as outlined in the previous chapter, Trade Mark Registration.

Substantially identical requires a side by side comparison, having regard to the similarities and difference between the essential features.¹ Deceptive similarity involves trade marks that so nearly resemble each other that they are likely to deceive or cause confusion.¹⁹

In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd,²⁰ the registered trade marks, label and words ‘Malt Balls’ were sufficiently different from ‘Malteasers’, and purely descriptive.

Video overview by Sarah Griffin-Breen on Deceptive Similarity

Types of Trade Mark Dilution

Dilution in the United States and European Union does not require confusion between two trade marks. Instead, blurring and tarnishing will amount to dilution. The Australian infringement provisions bear more similarity to passing off, and there is no explicit or clear link to dilution.

Blurring

Blurring is the result of the unauthorised use of a trade mark which mars the selling power of that trade mark. For example dilution by blurring might occur when the trade mark ‘Kodak’ is used with respect to motorcycles or the trade mark ‘Cadbury’ is used with respect to chainsaws.²¹

Tarnishment

Occurs when the use of a trade mark results in the tainting or downgrading of the positive associations the trade mark has come to convey. Often it will occur when a trade mark is linked to products of inferior quality or products of an immoral or unwholesome character or where the trade mark is portrayed in an unsavoury context likely to evoke negative thoughts about the trade mark owner.²²

Anti-dilution

Courts tend to dislike anti-dilution provisions and favour the use of consumer protection. The requirement of connection can be read down so that it doesn’t provide protection where there is no likelihood of confusion. If this happens, then the situation will not be considered a form of anti-dilution. The correct characterisation – consumer protection vs anti-dilution is still being debated. In the Nike Perfume case, the High Court said it was important to weigh competing interests carefully – ensure consumers aren’t deceived but also allowing them to access competition. The court will be reluctant to block uses of marks that are not likely to cause confusion where the category is so different from where the trade mark in question is not used.

Prohibition of Certain Acts

Under section 121 TMA a trade mark owner may prohibit certain acts in relation to the use of the trade mark and the doing of any of these acts in the course of trade also constitutes trade mark infringement. This provision operates if the registered owner of the trade mark has caused to be displayed on the registered goods a notice of prohibition as to any of the following matters:

• Applying the trade mark to the goods, or using the trade mark in physical relation to the goods, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered;
• Altering, or partially removing or obliterating, any representation of the trade mark applied to registered goods or used in physical relation to them;
• Removing the trade mark without also removing associated material;
• Applying another trade mark to the registered goods or using another trade mark in physical relation to them; or
• Using the trade mark on registered goods or in physical relation to them in a manner which would injure the reputation of the trade mark.

So a person will infringe a trade mark where he or she engages in such conduct, unless the goods are acquired in good faith and without awareness of the notice of prohibition.

Defences to Trade Mark Infringement

According to the TMA s 120(2) and (3), there is no infringement where the trade mark is used in related goods or services where there is no likelihood of confusion. This is an informal defence.

Defences to trade mark infringement are found in s 122 of the TMA. The table below outlines each of these.

In the above sections, ‘good faith’ means an absence of ulterior motive.²³ Absence of good faith cannot be inferred merely from striking similarity between the two marks.²⁴

In spite of s 120, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark.²⁵

Exhaustion / Consent

Under section 122A, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if:

• before the time of use, the person had made reasonable inquiries in relation to the trade mark; and
• at the time of use, a reasonable person after making such inquiries, would have concluded that the trade mark had been applied to, or in relation to, the goods by, or with the consent of, the registered trade mark owner (or other persons listed in section 122A(1)(c)).²⁶ Because it only excuses uses in relation to similar goods, the exhaustion defence in section 122A does not apply to TMA s 120(3). This provision is particularly important in relation to imported goods and second hand goods, and helps to ensure that owners cannot exercise a wider monopoly than intended under the Act.

Note that prior to amendments as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, the consent provision for goods was s123. The 2018 amendments inserted s122A and amended s123. The effect of the defence is largely the same prior to and after 2018.

A similar provision applies to services (section 123). A person who uses a registered trade mark for services that are similar to services in respect of which the trade mark is registered does not infringe the registered mark if it has been applied in relation to the services by, or with the consent of, the registered owner.²⁷

Prior Use

If a person has used a sign that is deceptively similar or substantially identical to the registered trade mark and they have been using concurrently for a period, at least before the filing date of the trade mark application, then they wont be infringing.²⁸ This is equivalent to TMA s 44(4) honest concurrent use provisions.

It is not mandatory to register a sign as a trade mark before using the sign. However, if you don’t register a trade mark, in some circumstances other people might be able to register your mark or a deceptively similar or substantially identical mark for the same or similar categories (especially if you don’t object). It is in these types of situations that the defence of prior concurrent use under section 124 will apply, so that the person who was using the mark before the date the registered trade mark was filed can continue to use.

There are limitations on the prior use provision. This includes instances where a person is trading under a particular name but only in a particular geographical region. The person may be allowed to keep using the name where the reputation exists. For instance, if the reputation exists only in Brisbane Australia, the prior use defence would not allow expanded use of the name beyond that area.

Rectification

Under TMA s 88(2), an aggrieved person or the Registrar can apply to the Court for an order that the register be rectified on the following grounds:

• Any of the grounds for opposition;

• The registration was obtained as a result of fraud, false suggestion or misrepresentation;

• At the time the application is filed, the use of the trade mark is likely to deceive or cause confusion.

Under s 88(1), if one of these grounds is satisfied, the court can cancel the registration of the trade mark, remove or amend the entry wrongly main or remaining on the Register, or enter any condition or limitation affecting the registration of the trade mark that ought to be entered.

Video overview by Nicolas Suzor on Grounds for Rejection, Opposition or Rectification

Video overview by Corrine Leach on Section 88 of the Trade Marks Act

Cross Claims to Trade Mark Infringement

If trade mark infringement under TMA s 120(1), (2) or (3) is claimed, the defendant can make the following cross-claims:

• That the trade mark is not substantially identical with or deceptively similar to the registered trade mark;

• That there has been no use as a trade mark – E.g. The Panadol Case, TShell v Esso;

• A defence to infringement found in s 122 of the TMA;

• Consent;²⁷

• Prior Use;²⁸

• The plaintiff’s trade mark is not valid – cross claim for rectification or removal;²⁹

• The plaintiff’s registered trade mark is generic;³⁰ (See video by Ayaka Nakashima Edwards on Genericide)

• The plaintiff’s mark contravened a limitation or condition;³¹ and

• Removal for non-use.³²

Further, the following claims can also be made in TMA s 120(2) infringement cases:

• The defendant’s use of the mark is not likely to deceive or cause confusion.¹⁹

• The defendant’s use of the mark is not in relation to goods or services of the same description or goods or services that are closely related to the goods or services for which the mark is registered with respect to.

Velcro’s advertisement explains The Dangers of Genericide for an Established Brand

Note that the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 amended sections 129 and 130 of the Act, relating to applications for relief from unjustified threats of infringement, and counterclaims for infringement. It also inserted s130A, which provides that mere notification of a registered trade mark is not a threat.

Remedies

There are a number of remedies available in trade mark infringement cases. Section 126 of the TMA provides a right to an injunction on any conditions the Court thinks fit, an election between damages (if harm) or an account of profits (if enriched by use of the trade mark) and additional damages where appropriate.

Where there has been trade mark infringement and the defendant has applied to remove the trade mark under TMA s 92, the court finds that the trade mark has not been used during the critical period in good faith by the registered owner and there are grounds for removing the trade mark, then the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any trade mark infringement that has occurred during the critical period (TMA s 127).

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