Mistakes to Avoid When Using a Trade Mark Without Authorisation
George Raptis
When it comes to using a registered trade mark without its owner’s authorisation, you run the risk of committing trade mark infringement. Trade mark infringement can arise if you use a mark that is similar or identical to an already registered trade mark concerning similar goods and services. There are, however, some instances where your unauthorised use of a registered trade mark would not constitute infringement. To ensure you are not infringing on a trade mark owner’s exclusive rights, you should avoid the following mistakes when using a trade mark without authorisation.
1. Using A Trade Mark For Comparative Advertising
Under the Trade Marks Act, it is possible to use a registered trade mark without the authorisation of the owner for the purposes of comparative advertising. This is partly because comparative advertising helps distinguish the goods and services in the same way that trade marks help differentiate a business within the market. For example, a fast-food chain might advertise a specialised offer that is more competitive than another fast-food chain.
However, comparative advertising often portrays one business in a less favourable light. Therefore, you must not defame your competitor or mislead and deceive consumers when you use your competitor’s trade mark. This can lead to unwanted legal action against your business. To ensure you do not contravene these laws, you should ensure your advertising is clear and objectively true.
2. Using A Trade Mark To Indicate The Purpose Of Your Goods And Services
Another instance in which you can use a registered trade mark without its owner’s authorisation is to indicate the purposes of your goods and services. This typically arises when your goods and services are compatible with other well-known goods and services. For example, a business that specialises in fixing Apple products might use Apple Inc.’s trade marks when marketing their services.
When you use a trade mark to indicate the purpose of your goods and services, you must do so in good faith. The ‘good faith’ requirement means that you must act honestly when using the trade mark. In Court, the presiding Judge would determine whether you acted in good faith objectively. This means that even if you had a subjective belief that you were acting honestly, the Court may nevertheless find that you attempted to:
- confuse consumers; or
- take advantage of the reputation associated with the trade mark you used.
To avoid finding yourself in a trade mark dispute, you should ensure you act diligently when using a registered trade mark. This can include seeking out the authorisation of the trade mark owner or consulting a trade mark lawyer to help clarify what you can and cannot do with a registered trade mark.
3. Using A Trade Mark To Describe Your Goods And Services
You can also use a registered trade mark without the authorisation of its owner if you are using it to describe your goods and services. According to the Trade Marks Act, you can use a registered trade mark to describe the:
- kind, quality, quantity, value or geographic origin of your business’ goods and services; and
- time your goods were produced or the time your services are given.
For example, the phrase ‘fresh fruit’ might be protected by a registered trade mark. However, it is possible to use the phrase to describe the produce your business offers.
However, similar to using a trade mark to describe the intended purpose of your goods and services, you must act in good faith. A Court would determine whether you acted in good faith based on your objective conduct rather than what you subjectively believed at the time of using the trade mark.
4.Using A Trade Mark If It Is Your Name
One of the last instances in which you can use a registered trade mark without the authorisation of the trade mark owner is if the mark contains your name or the name of your place of business. For example, you might be able to advertise your tech services using your family name McDonald, despite McDonald’s Inc. owning the exclusive rights to use the trade mark ‘McDonald’s’.
Again, you must use the trade mark that contains your name in good faith. To use the same example, if someone uses their family name McDonald when promoting their new burger restaurant, this could deceive consumers in an attempt to take advantage of McDonald’s Inc.’s reputation. To avoid acting in bad faith, you should seek the advice of a trade mark lawyer who can help clarify your legal position.
Key Takeaways
There are a select few instances in which you can use a registered trade mark without its owner’s consent and not commit trade mark infringement. These instances include using the registered trade mark to:
- comparatively advertise your business;
- indicate the purpose of your business’ goods and services;
- describe your business’ goods and services; and
- market your business if the trade mark contains your name or the name of your place of business.
If you are unsure about using a trade mark without the owner’s authorisation, our experienced IP lawyers can assist on 1300 657 423.
Frequently Asked Questions
This largely depends on your business’ circumstances and the reputation your unregistered trade mark may have acquired. If your trade mark is registrable, it would be worth considering trade mark registration. A registered trade mark provides you with the exclusive right to use, licence and sell your mark. In the instance where someone misappropriates your registered trade mark, it is much easier to enforce your trade mark rights than in the instance where your mark is unregistered.
A standard trade mark application will cost you $250 per class of goods and services included in your application.