Mistakes to Avoid When Using Trade Marks in Your Artwork

George Raptis

• 6 September 2021
• 7 September 2021
• 6 min read

Bansky and Andy Warhol are among the many famous artists who have used recognisable trade marks in their works. These works often satirise the brands associated with the trade mark, providing insightful critiques of the consumer market. However, if you use a registered trade mark without the authorisation of its owner in your art, you run the risk of committing trade mark infringement. To avoid infringing on the exclusive rights of a trade mark owner, you should be aware of the following mistakes artists often make when using registered trade marks in their work.

Understanding Trade Mark Infringement

As you may know, trade mark protection allows owners to prevent others from misusing their marks. Under Australian trade mark law, trade mark infringement can arise when someone uses an identical or similar mark to an existing registered trade mark concerning similar goods and services. For example, a tech startup that sells mobile phones and uses a half-eaten apple as their company’s logo would likely be infringing on Apple Inc.’s trade mark rights.

When using registered trade marks in artworks, there may be a chance that you commit trade mark infringement. This could arise in the instance where you print your art on certain merchandise or mass-produce your artwork. For example, you may produce an artwork depicting the ‘Gucci’ logo and print the artwork on clothing. In this instance, this could lead to trade mark infringement.

Fair Use Exceptions

There are, however, some fair use exceptions to trade mark infringement. Under these exceptions, you do not necessarily commit trade mark infringement. This is the case even though you might have used a registered trade mark without the trade mark owner’s consent.

1. Satirical Use

As you likely know, art provides a creative outlet to parody real life. When artworks depict recognisable brands in a satirical way, it is unlikely consumers will confuse this as a reproduction by the brand themselves. For example, an artwork like Banksy’s may depict Mickey Mouse’s signature silhouette. This would unlikely be confused by consumers as an artwork made by Disney themselves.

In this sense, an artwork that parodies brands generates humour rather than indicates the artwork’s origin. For this reason, the Trade Marks Office and the Australian Courts would likely recognise an artist’s satirical use of a registered trade mark would not constitute a typical ‘use’ of a trade mark for commercial purposes. However, satirical use of a trade mark, otherwise referred to as nominative fair use, can also arise where:

• the use of the registered trade mark does not suggest an endorsement by its trade mark owner; and
• the artwork would otherwise remain unidentifiable but for the use of the registered trade mark.

If you are unsure whether your depiction of a registered trade mark would be considered infringement, you should seek the advice of a lawyer. They can advise you on whether your work falls within this fair dealing exception. They can also advise whether you have infringed on someone else’s trade mark rights.

2. Descriptive Use

Under the Trade Marks Act, you are allowed to use honest descriptions of your goods and services, even if that description involves someone else’s registered trade mark. This exception is on the basis that you use the trade mark in good faith rather than for the ulterior purpose of making an improper gain. For example, your artwork may include descriptions or logos that indicate the aesthetic qualities of your artwork or someone else’s. In this instance, your use of the trade mark would be considered merely descriptive. This is because you are not using the mark to benefit from its associated reputation.

As above, if you are unsure whether your use of a registered trade mark would be considered trade mark infringement, you should seek the advice of a lawyer. 

Protecting Your Artwork

Whilst trade mark law heavily influences the way you might use trade marks in your artworks, it offers little in terms of protecting your intellectual property from being copied. Rather, you can best protect your artwork under copyright law.

Copyright law prevents others from copying your original works without your consent as the work’s creator.

In Australia, copyright protection applies automatically to artworks if they are:

• one of a kind;
• produced using your skills and effort; and
• put into material form, i.e. painted on a canvas or recorded on film.  

As the copyright owner of your artwork, you have the exclusive right to control how others use or reproduce your artwork. For example, if a person exhibits your work in a gallery or takes a photograph of it, they generally do not need your permission. However, you do have moral rights as the original creator to be properly credited for your work. If someone fails to credit you as the creator or misuses your work without your permission, they may be committing copyright infringement. In this instance, you have the legal means to prevent them from continuing their infringing conduct.

Key Takeaways

If you use a registered trade mark in your artwork without its owner’s authorisation, you may be committing trade mark infringement. There are, however, some exceptions to this principle. For example, if you depict a trade mark in a satirical manner or use it as a description for your work, the Courts would unlikely consider this to be trade mark infringement. 

If you need advice on how to use trade marks in your artwork, our experienced IP lawyers can assist on 1300 657 423.

Frequently Asked Questions