Defences

Defences to Trade Mark Infringement

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)).

Defences to Trade Mark Infringement

Using your name or place of business in good faith (section 122(1)(a))

Using your name or business location in good faith, with evidence of recognition for abbreviated names. Good faith means acting honestly.

Used descriptively in good faith (section 122(1)(b))

Using a sign in good faith to describe the characteristics of your goods or services rather than benefitting from another party’s goodwill.

Used in good faith to indicate the intended purpose of the goods or services (section 122(1)(c))

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.

Used for the purposes of comparative advertising (section 122(1)(d))

Defences of this kind allow you to refer to other trade marks when making a comparison between different goods and/or services.

Exercising a right to use (section 122(1)(e))

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.

The trade mark would obtain registration (sections 122(1)(f) & 122(1)(fa))

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.

Registered trade mark is subject to limitations (section 122(1)(g))

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.

A registered disclaimer (section 122(1)(2))

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.

Consent of the registered owner (section 123)

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.

Prior use (section 124)

Being the first to use the mark and using it continuously can be a defence against alleged infringement, but seeking legal advice is recommended.

Can I file a cross claim in addition to the above defences?

Additional potential cross claims to the above defences:

• Your mark is not substantially identical or deceptively similar.
• Your mark is not likely to deceive or cause confusion.
• The trade marks are for different goods or services.
• The other party’s mark is not valid or generic.
• The other party’s mark should be removed for non-use.

Can I file an appeal?

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.

Need trade mark help regarding Defences to infringement allegations?

Please get in touch with our defence experts today via phone or the contact form on this page.

1800 820 083