Author: Ian Aldridge, Progressive Legal
This page discusses defences to trade mark infringement under the Trade Marks Act 1995.
The registered owner of a trade mark has the exclusive right to use it (section 20(1)) and if someone else uses a mark that is the same or deceptively similar without consent, the owner can seek relief (section 20(2)).
Using your name or business location in good faith, with evidence of recognition for abbreviated names. Good faith means acting honestly.
Using a sign in good faith to describe the characteristics of your goods or services rather than benefitting from another party’s goodwill.
Using another party’s trade mark to indicate the purpose of your goods or services, rather than deceiving consumers into thinking that your goods are produced by the other party.
Defences of this kind allow you to refer to other trade marks when making a comparison between different goods and/or services.
If multiple parties have registered the same trade mark in the same class of goods and services, neither party may take legal action against the other for trade mark infringement.
If IP Australia rejects registration of a substantially similar or identical trade mark, the court will not prosecute for infringement if the owner can show prior or honest concurrent use.
A person using a sign may not infringe the exclusive right of the registered owner if there are conditions or limitations on the registered trade mark.
If a disclaimer has been registered in respect of a part of a registered trade mark, you won’t have infringed the trade mark by using that part of the trade mark.
Applying for a trade mark with the consent of the registered owner, particularly for similar goods or services, including the sale of second-hand goods and parallel imports.
Being the first to use the mark and using it continuously can be a defence against alleged infringement, but seeking legal advice is recommended.
Additional potential cross claims to the above defences:
You can appeal adverse decisions to the Federal Court because it has jurisdiction over appeals from lower courts, including state courts. Appeals from the Federal Court can be made to the Full Federal Court or the High Court with special permission.
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