Tips to Avoid Breaching Trade Mark Law

George Raptis

• 25 February 2022
• 2 March 2022
• 6 min read

Whether you own a registered trade mark or use a trade mark under a licensing agreement, there are a few ways you can breach trade mark law. Notably, the Trade Marks Act grants the owners of registered trade marks the exclusive right to use and authorise the use of their trade mark. If you infringe on another trade mark owner’s exclusive rights, you could face serious consequences. To avoid breaching trade mark law by committing trade mark infringement, this article outlines:

• what trade mark infringement is; and
• how you can avoid breaching trade mark infringement law.

What is Trade Mark Infringement? 

By its definition, trade mark infringement primarily occurs when a person uses a sign:

• that is substantially identical or deceptively similar to a registered trade mark; and
• concerning the same, or closely related, goods or services for which the trade mark is registered.

For example, Apple Inc. has a registered trade mark over the name ‘iPhone’ concerning computer software products and smartphones. If you decided to sell smartphones under a name that is substantially identical or deceptively similar to the name ‘iPhone’, you would likely be committing trade mark infringement.

Whilst trade mark infringement can arise in many circumstances, there are some instances where using a registered trade mark without the owner’s permission will not be infringement. For example, a person acting in good faith can use a registered trade mark if it:

• is their own name;
• describes their good or service; or
• indicates the intended purpose of their good or service. 

Whether you acted in good faith does not depend on what you believed when using the registered trade mark. Instead, the court will view your actions from an objective standpoint. That is to say, the court will ask whether there was:

• an honest belief that using the trade mark would not confuse consumers; and
• no intention to take advantage of the reputation of the business that owned the registered trade mark. 

In any event, you should always seek the trade mark owner’s permission before you use the trade mark. This way, you can help avoid infringing their intellectual property rights. If the registered trade mark owner refuses to give permission, you should consider rebranding your business with the help of a trade mark lawyer or attorney.

Avoiding Infringement 

Below are several ways you can avoid breaching trade mark law.

Identify Registered Trade Marks

Some infringers are not aware that the signs and symbols they are using are in fact someone else’s registered trade mark. Before you use a name, logo or catchphrase in connection with your business’ goods and services, you should identify whether the signs are protected via registered trade marks.

Your first port of call when identifying a registered trade mark is whether it displays the reserved symbol. Owners of registered trade marks will often display the reserved symbol ‘®’ in the upper right-hand corner of the trade mark. This symbol informs you that you should not use the trade mark inconsistently with its owner’s rights.

If the trade mark does not contain the reserved symbol, or you are unsure whether the registration is valid, you should search the Australian Trade Marks Search. The Search contains all pending, registered and removed trade marks filed with IP Australia. You can use the search function on the register to identify a registered trade mark by entering its keywords or uploading an image of the trade mark. This way, you can identify whether a trade mark is registered and act accordingly.

Obtain a Licence

One of the best ways to avoid infringement is by obtaining a licence from the trade mark owner. Licensing is where a trade mark owner agrees to let you use their registered trade mark over a specified period for an agreed price. Under a licensing agreement, you might obtain:

• exclusive rights, meaning no other person except you can use the trade mark during the licensing period;
• non-exclusive rights, meaning you can use the trade mark alongside others during the licensing period; or
• a combination of both exclusive and non-exclusive rights.

Licensing agreements often cover the range of products and services and the geographic region in which you can use the trade mark. Once the licensing period is over, the right to use the trade mark returns to the registered trade mark owner.

Ultimately, as long as you use the trade mark consistent with the agreed terms in the licensing arrangement, you will not infringe on the owner’s intellectual property rights. 

Immediately Act if You Receive An Infringement Notice

If you receive an infringement notice from a trade mark owner, you should stop using the trade mark immediately. Doing so will give you time to seek out legal advice to confirm whether you have committed trade mark infringement. Additionally, you can prevent further infringements from occurring by not using the trade mark.

However, you should note that some traders send letters of demand on unjustified claims of infringement. For this reason, it would be wise to seek legal advice to clarify whether you have breached another’s intellectual property rights. 

Key Takeaways

One of the ways you can breach trade mark law is by committing trade mark infringement. Trade mark infringement can occur where you use a sign:

• that is substantially identical or deceptively similar to a registered trade mark; and
• concerning the same goods or services which the registered trade mark protects. 

To avoid committing trade mark infringement, you should:

• identify whether the trade mark is registered before you use it;
• obtain licensing rights to use the trade mark (if appropriate); and
• immediately cease the infringing conduct if you receive an infringement notice. 

If you have received a notice of infringement, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.

Frequently Asked Questions