The best way to avoid infringing a registered trade mark is to avoid using that trade mark, or a deceptively similar mark, in relation to relevant goods or services covered by the trade mark. In order to do this, a person intending to use a trade mark should search the Register of Trade Marks to see whether there is a conflicting mark (you can search for trademarks via IP Australia’s website at www.ipaustralia.gov.au). For more information, see “Searching for registered trade marks”).
The best place to search for registered trade marks is the Australian Register of Trade Marks. You can search the register online using the “Australian trade mark search database”, which is available at https://search.ipaustralia.gov.au/trademarks/search/quick.
Searching for registered trade marks can be complex. It is recommended that professional assistance be sought to increase the likelihood that all relevant trade marks are located.
When searching for trade marks, also try to locate unregistered common law trade marks that may be used in Australia (because, as noted above, trade mark use can confer rights on the user at common law that may still be infringed by use of that mark or a deceptively similar mark).
Not all uses of a trade mark infringe a trade mark registration. The TM Act (s 122) sets out defences to an infringement claim. These defences include:
• use in good faith of the name of the person using the trade mark, or the name of the person’s place of business;
• use in good faith of a predecessor in business’ name or place of business;
• use in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services, or the time of production of goods or of the rendering of services;
• use for the purposes of comparative advertising;
• use in exercise of a right given under the TM Act;*
• use where a court is of the opinion that the person using the trade mark would obtain registration of the mark if they were to apply for it;
• use that does not infringe the trade mark registration because of a condition or limitation applicable to the registered trade mark.
The expression “use in exercise of a right given under the TM Act” means that obtaining registration of a trade mark ensures that use in relation to the goods or services covered by the registration does not infringe another registered trade mark.
The expression “use where a court is of the opinion that the person using the trade mark would obtain registration” means that if an allegedly infringing mark has been used to such an extent that a court finds that it would qualify for acceptance for registration on the grounds of prior use or honest concurrent use, then the continued use of the mark for the relevant goods or services does not infringe.
Other defences are also specified in the TM Act. Prior use – that is, use of the mark in Australia by the alleged infringer before the date of the trade mark’s registration and its earliest use by the owner – is a defence under section 124. Use of a mark in relation to goods or services where the mark has been applied to the goods, or applied in relation to the goods or services with the consent of the registered owner of the mark, does not infringe under section 123.
This last section provides a defence in cases of “parallel importation” (see “Using trade marks overseas”).