19B.4. The right to take infringement action

The registered owner, and in some instances the authorised user, may take an action for infringement of a registered trade mark. An action for infringement is a civil action between a trade mark owner or authorised user and the alleged infringer. The action must be brought before a court of competent jurisdiction (generally the Federal Court, the Federal Circuit Court or another court exercising Federal jurisdiction). The Registrar has no role in infringement proceedings.

4.1  Criteria for infringement under the general infringement provisions

Subsection 120(1) provides that a registered trade mark is infringed if a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to the goods or services in respect of which the trade mark is registered.

A registered trade mark is also infringed (subsection 120(2)) if a person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

• goods of the same description as that of goods (“registered goods”) in respect of which the trade mark is registered;

• services that are closely related to registered goods;

• services of the same description as that of services (“registered services”) in respect of which the trade mark is registered;

• goods that are closely related to registered services

However if the person who is alleged to have infringed the trade mark under subsection 120(2) can establish that their use of the sign is not likely to deceive or cause confusion then they will not have infringed the trade mark.

4.2  Criteria for infringement in respect of well known trade marks

Under subsection 120(3), a registered owner of a well known trade mark can take infringement action against a person who uses, as a trade mark, a substantially identical or deceptively similar sign in relation to goods or services unrelated to those in respect of which the well known trade mark is registered.

The registered owner will be required to establish that, because the trade mark is well known, use of the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner and for this reason the interests of the registered owner are likely to be adversely affected. This provision implements Australia’s international obligations to provide protection to the registered owners of well known trade marks.

4.3  Infringement of trade mark by breach of certain restrictions

Under section 121 a registered trade mark is infringed if the registered owner, or an authorised user of the trade mark having power to do so, has caused to be displayed on goods in respect of which the trade mark is registered a notice of prohibition, and a person who acquires the goods does or authorises an act, in the course of trade, that is prohibited. Acts that are prohibited are set out in subsection 121(2). The trade mark is not infringed if the person acquired the goods in good faith and without being aware of the notice of prohibition or became the owner of the goods by virtue of a title derived from a person who had so acquired them.

4.4  When infringement will not occur

Sections 122 to 124 detail the limited circumstances in which a person may use a trade mark without infringing the rights of the registered owner. These include:

• use of the person’s name or the name of the person’s place of business (or the name of the person’s predecessor) (paragraph 122(1)(a));

• use in good faith of descriptive terms such as those indicating quality, quantity, intended purpose, value, geographical origin or some other characteristic of goods or services, or the time of production of goods or of the rendering of services (paragraph 122(1)(b));

• use in good faith to indicate the intended purpose of the goods (in particular as accessories or spare parts) or services - (paragraph 122(1)(c));

• use for the purposes of comparative advertising (paragraph 122(1)(d));

• the exercise of a right to use a trade mark given under the Act (paragraph 122(1)(e));

• when the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it (paragraph 122(1)(f));

• where there is no infringement of the owners exclusive right because of some condition or limitation on the registration  (paragraph 122(1)(g));

• where a disclaimer applies to part of the trade mark, a person cannot infringe the trade mark by using that part of the trade mark (subsection 122(2));

• if the trade mark has been applied to or in relation to similar goods or services by, or with the consent of, the registered owner of the trade mark (section 123);

• where the alleged infringer can establish continuous use, in the course of trade, of their unregistered trade mark (in respect of goods similar to registered goods, services similar to registered services, goods closely related to registered services or services closely related to registered goods) which is substantially identical with, or deceptively similar to, a registered trade mark, from a time before the date of registration of the registered trade mark or the first use of the registered trade mark, whichever is the earlier (section 124).

• Where at the time of use reasonable inquires had been made in relation to the trade mark, and a reasonable person would have concluded that the trade mark had been applied to, or in relation, to the goods, by or with consent of the registered owner, an authorised user,  a person permitted to use the trade mark by the registered owner or authorised user, a person with significant influence over the use of the trade mark by the registered owner or authorised user, or an associated entity (section 122A).