- Exclusive Rights Granted Upon Registration
- Types of Infringement
- General Elements of Trade Mark Infringement
- Types of Trade Mark Dilution
- Prohibition of Certain Acts
- Defences to Trade Mark Infringement
- Cross Claims to Trade Mark Infringement
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
The below video by Nicolas Suzor provides an overview of The Trademark Infringement Framework.
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. [^AUTOREPLACEDTMAs723ENDREPLACE] A registered trade mark becomes a type of property and may be licensed to others for use. [^AUTOREPLACEDTMAs723ENDREPLACE]: TMA s 72(3)
Section 120 of the TMA sets out the three ways in which a trade mark can be infringed. These are:
- 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. 4
- 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.5
- 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: 6
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. 7
Video overview by Ria on The Different Forms of Infringement in s 120
Video overview by Rohan Davies on The Different Forms of Infringement under s 120
Infringement may occur when an alleged infringing mark is used in the same class of goods or services as the registered mark. 4 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. 4: TMA s120(1)
For more information read Amanda Scardamaglia’s The Coca-Cola Company v Pepsico Inc & Ors VID 876/2010‘Storm in a Contour Bottle? – The Coca-Cola Company v Pepsico Inc & Ors VID 876/2010’, Fortnightly Review of IP & Media Law, Edition 18 (11 November 2010) Licensed for reuse under a Creative Commons Attribution-NonCommercial 2.5 Licence).
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. 5 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. 5: TMA s 120(2)
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.
In E & J Gallo Winery v Lion Nathan Australia Pty Limited 8 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.
In Musidor BV v Tansing (t/as Apple Music House), 9 concerned Musidor selling Rolling Stones bootlegs. Musidor made it plain in its advertising and get-up that the source of the origin of the goods was not authorised. Held, the disclaimer was effective to show that the goods were not related. It was held that no infringement occurred.
In Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd, 10 ‘Duff’ beer which disclaimed any association with The Simpsons was still held to amount to infringement. The disclaimer was too simplistic in approach. The beer was an express reference to The Simpsons and therefore the disclaimer was not effective.
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. 6
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, 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. Must be significant brand with interests in many different categories or an international company. If their reputation is not large enough, if they are really a niche trader and it is unlikely a consumer would think they produced a product in a completely different category, then this is unlikely to apply. The onus is on the trade mark owner.
Examples of well-known trade marks:
In Virgin Enterprises Limited v Klapsas – Virgin obtained judgement against people trying to sell Virgin limousines or Virgin rentals. The court stressed the large investments made by Virgin in marketing and promoting the brand globally was such that if the defendant ran a Virgin ad, it was likely customers would be confused. 14
In San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd - there was a serious question to be tried as to whether the use of SAN REMO on coffee machines infringed the (potentially) well-known trade mark for ‘San Remo’ pasta. Note this decision was made with some reluctance. 16
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. For example, PUMA for use on beer or CADBURY for use with respect to motorcycles. The use must indicate a connection with the owner.
In Coca-Cola Co v All-Fect Distributors Ltd, 17 the court held that cola lollies would not give rise to consumers questioning whether there was a connection between Coca-Cola and the lollies.
17:  FCA 1721
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.
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 for another. 18 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. 19 The trade mark must be used or intended to be used physically in relation to goods or services. 20
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.
Kitto J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd held:21
[T]he purpose and the only purpose that can be seen in the appearance of the little man on the screen is that which unites the quickly moving series of pictures as a whole, namely the purpose of conveying by a combination of pictures and words a particular message about the qualities of Shell petrol. This fact makes it … quite certain that no viewer would ever pick out any of the individual scenes … and say to himself: “There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs. And one may fairly affirm with even greater confidence that the viewer would never infer from the films that every one of the forms which the oil drop figure takes appears there as being a mark which has been chosen to serve the specific purpose of branding petrol in reference to its origin.
In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd, 22 it was held that Johnson & Johnson had only used ‘caplets’ in a descriptive sense as to shape and dosage and not as indicative of origin or identity. 22:  FCA 310
Video overview by Annabel Burton on Use as a Trade Mark and Johnson & Johnson
In Top Heavy v Killin, 23 the words ‘Chill out’ were not indications of the provenance of the T-shirts. The message which the mark conveyed in general terms is an exhortation to the reader to relax. Coca-Cola could thus not assert trade mark infringement. 23: (1996) 34 IPR 282
‘Any reference that the words ‘Tub Happy’ have to the character or quality of articles of clothing is very remote. They are in the nature of a coined phrase. Inanimate objects including articles of clothing cannot have the character or quality of happiness whether they are in a tub or not.’
Since ‘Tub Happy’ was not being used to describe the qualities of the product (washability, freshness, cheapness), it could be registered as a trade mark.
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. 25
In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd, 26 the registered trade marks, label and words ‘Malt Balls’ were sufficiently different from ‘Malteasers’, and purely descriptive. 26:  FCA 606
Video overview by Sarah Griffin-Breen on Deceptive Similarity
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 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. 27
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. 28
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.
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.
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.
^ Section ^ Defence ^ | s 122(1)(a)(i) | The person uses in good faith the person’s name or the name of the person’s place of business. | | s 122(1)(b)(i) | The person uses a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services (descriptively – not used much as often wont be using as a TM). | | s 122(1)(c) | The person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services: Can use a TM to show goods (e.g. spare parts or peripherals) are compatible with another trader’s goods; Ensures TM does not provide TM owners with an extensive monopoly. | | s 122(1)(d) | The person uses the trade mark for the purposes of comparative advertising; Traders can use other people’s marks to compare their products to another trader’s; Use to distinguish from the competition (E.g. say my brand is better than Apple); Encourages competition and genuine comparative advertising between the two. | | s 122(1)(e) | The person exercises a right to use a trade mark given to the person under this Act. (E.g. if two conflicting registrations). | | s 122(1)(f) | A trade mark will not be infringed where the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it. | | s 122(1)(fa) | A trade mark will not be infringed where the person uses a trade mark that is substantially identical with or deceptively similar, the first-mentioned trade mark; and the court is of the opinion that the person would obtain registration of the substantially identical or deceptively similar trade mark in his or her name if the person were to apply for it. | | s 122(1)(g) | The trade mark will not be infringed if its use falls within a limitation or condition imposed on the registration of the mark. |
** Video overview by Craig Sherritt on The Comparative Advertising Defence**
Video overview by Natalie Cruickshanks on Trade Mark Spare Parts Defence
Video overview by Andrew Avenell on The s 122(1)(c) Spare Parts and Accessories Defence
Use of the trade mark cannot be calculated to divert business from the registered trade mark owner or to confuse customers as to the origin of goods.
Video overview by Abigail Hill on The Good Faith Defence in s 122 (1)(b)
Video overview by Shelby McGreachan on The Good Faith Use of Own Name
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 the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered trade mark owner. 31
Because of the requirement of similar goods, this defence does not apply to TMA s 120(3).
This provision helps to protect uses in relation to imported goods or second hand goods. It is specifically included to allow parallel importing and second hand markets. It ensures that owners cannot exercise a bigger monopoly than intended under the Act.
A similar provision applies to services. 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. 32
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.
Video overview by Alex Trezise on former Section 123 of the Trade Marks Act
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. 33 This is equivalent to TMA s 44(4) honest concurrent use provisions. 33: TMA s 124
Registration of a trade mark is not necessary. But if you don’t register a trade mark, other people might be able to (in some circumstances), especially if you don’t object, register your mark or a deceptively similar or substantially identical mark for the same or similar categories. If this happens defence of prior concurrent use will apply so that the person who was using the mark before the date the registered trade mark was filed, they 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 business. The person may be allowed to keep using where the reputation exists. For instance, if the reputation exists only in Brisbane Australia, the mark can’t be used to expand the business beyond.
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
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. 34
Video overview by Corrine Leach on Section 88 of the Trade Marks Act
Video overview by Jessica Hine on Section 88 of the Trade Marks Act
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, The Esso Man Case;
A defence to infringement found in s 122 of the TMA;
- Prior Use; 33
- The plaintiff’s trade mark is not valid – cross claim for rectification or removal; 35
- The plaintiff’s registered trade mark is generic; 36
- The plaintiff’s mark contravened a limitation or condition;37 and
- Removal for non-use. 38
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. 25
- The defendant’s use of the mark is not n 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
Video overview by Stephanie Derrington on Genericide
Video overview by Ayaka Nakashima Edwards on Genericide
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.
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 and 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 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).
TMA s 20(1) ↩
TMA s 20(2) ↩
TMA s 120(4) ↩
 FCA 1538 ↩
Nintendo Co Ltd v Care  FCA 1538 ↩
 FCA 1502 ↩
Virgin Enterprises Limited v Klapsas  FCA 1502 ↩
 FCA 1842 ↩
San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd  FCA 1842 ↩
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 ↩
TMA s 17 ↩
TMA s 7 ↩
See for example Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd and Kodak Cycle Co Ltd, Re Trade Mark No 207006 15 RPC 105 ↩
See for example Toys ‘R Us Inc v Akkaoui (40) USPQ 2d 1836 (ND Cal, 1996) ↩
Angoves Pty Ltd v Johnson (1982) 43 ALR 349 ↩
Geoffrey Inc v Luik (1997) 38 IPR 555 ↩
TMA s 122A ↩
TMA s 122(2) ↩
TMA s 88 ↩
TMA s 87 ↩
TMA s 86 ↩
TMA s 92 ↩