When is unauthorised use of a trade mark not an infringement of the trade mark owners rights?

The owner of a registered trade mark has an exclusive right to use that trademark. But what happens when you use a trade mark without the permission of the trade mark owner? The Trade Marks Act provides protection to users of a trade mark in limited circumstances where their use does not infringe the trade mark owner's rights.

Trade mark infringement

Under s 120 of the Trade Marks Act 1955 (Cth) (the Act)1 the registered proprietor of a trade mark is granted the exclusive right to:

use; and authorise others to use that trade mark in relation to the goods and services in which it is registered. You will infringe a trade mark owners' rights if you use as a trade mark a sign which is substantially identical with, or deceptively similar to, the registered trade mark, in relation to the specified goods and services of the trade mark.2

Section 122 of the Act allows some limited, specified exceptions to this rule by permitting third party use in certain circumstances.

When is a trade mark not infringed?

Use of own name

Section 122(1)(a) allows you to use your own name or the name of your business (or the name of your predecessor in business) in good faith.

Good faith requires an "honest belief that no confusion would arise by reference to the earlier trade mark's reputation, and the absence of an intention to take advantage of the reputation acquired by another trader".3 Whether or not you are acting in good faith is determined objectively.

In 2013, the Federal Court of Australia restrained Bob Jane (via his associated entities)4 from using his own name to sell tyres, wheels, batteries, accessories for auto motive vehicle parts and services relating to their installation.5

Following an acrimonious departure from Bob Jane Corporation Pty Ltd (a major component of the business being Bob Jane T-Mart), Bob Jane commenced trading using marks such Bob Jane Global Type Corporation Limited and Bob Jane Southern Motors.

As Bob Jane was using his own name, the court considered a possible defence under section 122(1)(a). As he had previously allowed his name to become part of the Bob Jane Corporation Pty Ltd trade marks, and was aware of their continuing use, it was found that the respondents commenced use of similar names with the intention that consumers would associate them with Bob Jane Corporation Pt Ltd. Further, Bob Jane and the respondents communicated with the suppliers of Bob Jane Corporation Pty Ltd which misled at least one to believe that they...