When Is An Unauthorised Use Of A Trade Mark Not Considered Infringement?

George Raptis

• 2 August 2021
• 18 January 2022
• 6 min read

Trade mark infringement occurs when a person, without the permission of the trade mark owner, uses a trade mark that is identical or similar to the owner’s trade mark concerning the same goods or services that the owner’s trade mark protects. However, there are some instances, otherwise referred to as defences, where trade mark infringement does not occur. This is even when the person uses a trade mark without the permission of the trade mark owner. This article outlines some instances where unauthorised use of a trade mark is permitted, without becoming trade mark infringement.

1. Using Your Own Name 

Under the Trade Marks Act, a person does not commit trade mark infringement if they use their own name or the name of their place of business in good faith. For example, it may be possible to advertise your business’ cleaning services with your family name Macintosh. This is despite Apple Inc. owning the exclusive rights to use the trade mark ‘Macintosh’ concerning computer equipment and manuals. However, you must only use your name in good faith. 

Good faith means that there was an honest belief that you would not confuse consumers by using your name. Additionally, you cannot intend to take advantage of the reputation gained by the business that owned the registered trademark. 

To use the same example as above, suppose you used your family name Macintosh to advertise computer software. This is likely to deceive consumers or take advantage of Apple Inc.’s reputation. You should note that whether you acted in good faith does not depend on your personal intention. Instead, the Court determines what a reasonable person in your position would have honestly believed. 

For example, suppose if you did not consider that using your family name Macintosh would confuse consumers concerning your goods. The Court may still find that you deliberately acted to take advantage of Apple Inc.’s reputation. In this instance, acting in good faith may require that you act diligently. You must ensure that using your family name would not conflict with a registered trade mark. 

2. Describing Your Goods or Services

Another instance where a person does not commit trade mark infringement is where they use a trade mark to strictly describe the nature of their goods or services. You can also use trade marks to describe the kind, the quality and the intended purpose of the good or service, as well as the value and geographical origin of the good or service. 

For example, it may be possible to use the word ‘fresh’ to describe your business’ food product. You can do this without infringing the rights of various trade mark owners who have protected the word ‘fresh’ concerning their goods or services.

Additionally, you must only use a trade mark to describe your good or service in good faith. Notably, whether you acted in good faith does not depend on what you believed at the time that you began describing your goods or services with the registered mark. Instead, the Court will assess your actions from an objective viewpoint. This means that the Court would consider whether a reasonable person would have had an honest belief that describing their goods or services in such a way would not deceive consumers nor take advantage of another business’ reputation. 

3. Indicating the Purpose of Your Goods or Services 

A person may also use a trade mark to indicate the purpose of their good or service without infringing on the trade mark owner’s rights. Most of the cases which have arisen under this category are usually where a business has indicated that the purpose of their goods is to be a compatible accessory to other goods. For example, a business that makes accessories compatible with an iPhone may advertise its accessories for use with a certain iPhone model.

However, you must only use a trade mark to describe your good or service if you do so in good faith. Using the same example as above, if it is clear that the business has used the description to indicate affiliation with Apple Inc.’s products, this is likely to mislead consumers. To avoid misleading consumers in this instance, the business must clearly indicate that their accessories are not officially affiliated or produced by Apple Inc. Instead, they could use words like “suitable” or “compatible” with Apple Inc.’s products to indicate the purpose of their goods or services without infringing on anyone’s trade mark rights. 

4. Comparative Advertising 

Another common instance where unauthorised use of a trade mark would not be considered infringement is where a business uses the trade mark for comparative advertising. Businesses will often distinguish their goods or services from others in the market to gain a competitive advantage. For example, a cleaning service might advertise a specialised offer that is more competitive than another cleaning service. However, these comparisons often portray the comparable business in a less positive light. Therefore, there is a risk that the advertising may mislead or deceive consumers. 

Key Takeaways

Under the Trade Marks Act, there are several instances in which you can use a trade mark without the permission of the trade mark owner without committing trade mark infringement. This includes using your own name concerning your good or service. It also includes describing your good or service and indicating the purpose of the good or service. In these instances, however, you must act in good faith. This means that from an objective viewpoint, you must have honest belief that using the trade mark would not deceive consumers. Additionally, your use must not attempt to take advantage of the reputation of the trade mark owner’s business. If you require further legal assistance with using trade marks, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.  

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