Trade mark infringement

What is trade mark infringement?

Trade mark infringement can occur when someone uses a brand name, logo, slogan, or another identifying mark that is too similar to someone else’s registered trade mark,[1] particularly if it is for the same or similar goods or services.[2]This can lead to confusion among consumers about the source of the goods or services being offered.

In Australia, there are laws protecting registered trade marks (specifically the Trade Marks Act 1995 (Cth)). A registered trade mark gives its owners the exclusive right to use the trade mark in Australia and the ability to stop others from using the trade marks without permission.[3]

What is protected under a registered trade mark?

Understanding what a registered trade mark protects is essential to identifying infringement.[4] A trade mark registered with IP Australia gives its owner exclusive rights based on two key components:[5]

1. The sign itself – the word, logo, phrase, or other trade mark registered (see Kinds of Trade Marks for more information).[6]
2. The goods and services – those listed in the registration (see  Classes of Goods and Services for more information).[7]

Protection is generally limited to these combined elements.[8] For example, a person will infringe a registered trade mark if they use a similar trade mark with the same or similar goods or services listed in the registration. In contrast, there may be no infringement if a similar sign is used for completely different goods or services.[9] 

However, the law does protect well-known trade marks in some cases.[10] Infringement can occur when a well-known trade mark is used in relation to goods or services unrelated to the registered trade mark.[11]

How does trade mark infringement happen?

Where a trade mark is registered with IP Australia, the following combined events may constitute infringement, provided they occur during the term of protection and without the permission of the owner:

1. Someone uses a sign “as a trade mark”

This is a crucial requirement. The infringer must use the sign as a ‘badge of origin,’[12] or in other words, to indicate the source or origin of the goods or services.[13] This involves using the trade mark to identify or differentiate their products or services in the marketplace.[14] This requirement limits infringement and allows for legitimate references to trade marks in contexts that do not suggest commercial origin.

Examples of use as a trade mark:

• Applying the sign to product packaging or labels[15]
• Using the sign in advertising to promote goods or services[16]
• Displaying the sign on business signage or storefronts[17]
• Using the sign on websites to market products[18]

Examples that are not use as a trade mark:

• Using a word in its ordinary descriptive sense (e.g., using "apple" to refer to the fruit)[19]
• Referring to a trade mark for informational purposes[20]
• Using a sign purely for functional or decorative purposes[21]

2. Someone uses an almost identical trade mark or one that is similar enough to confuse people

This is when someone uses a trade mark that resembles or sounds almost exactly like a registered trade mark,[22] with only tiny differences that would go unnoticed by most consumers.

For example, suppose the word “KOALA COMFORTS” is a registered trade mark for bedding products. In that case, using “KOALA KOMFORTS” (just changing the spelling) for similar products would likely be considered too similar. Alternatively, someone uses a trade mark that, despite having some differences, is too similar to the registered trade mark. This similarity is likely to confuse consumers about who produces the product or provides the services.[23] For instance, it may look or sound similar enough to a registered trade mark. 

For example, if “BLUE WAVE” with a wave picture is a registered trade mark for surfboards (see below), using "BLU WAIVES" with a similar wave design for surf gear could confuse customers into thinking they are from the same company.

When looking at possible trade mark infringement, courts compare the registered trade mark with the alleged infringing trade mark and consider:

• How similar the trade marks look and sound[24]
• The impression left by the trade marks[25]
• Whether the trade marks convey the same idea[26]
• Where and how the products are sold[27]
• Whether the typical customer would take the time to notice differences[28]
• Whether anyone has actually been confused.[29]

3. Using the mark on the same or similar goods or services

Lastly, the trade mark is used to sell goods or services that are the same or similar to those listed in the registered trade mark. Therefore, infringement can still occur even when the trade mark is used for goods or services that are not identical to those covered by a registered trade mark but are similar or closely related.[30]

For example, if “SUNNY DAYS” is registered for coffee, using “SUNNY DAYS” for soft drinks might infringe because both products are related to non-alcoholic beverages.[31] Customers might think the same company makes them.

Again, courts consider several factors when determining whether goods or services are similar or closely related.[32]

Alternatively, infringement can occur when someone uses a ‘well known’ trade mark in relation to goods or services unrelated to those listed in the registration.[33] However, this kind of infringement has not been heard much in court, and its scope is not currently clear. 

What is not trade mark infringement 

It is important to understand what does not constitute infringement. The Trade Marks Act 1995 provides several situations where a trade mark is not infringed, including a person who is:

• using their own name in good faith as a trade mark.[34]
• just describing the goods or services, or stating where your business is located. [35]
• indicating the intended purpose of the goods or services (like "fits iPhone models").[36]
• comparing the goods or services to others.[37]
• using an already registered trade mark.[38]
• using a trade mark that they could obtain registration for.[39]
• using a mark that they had before the other mark was registered.[40]

Understanding the boundaries of protection

It is essential to recognise that trade mark protection has limitations. Let’s say, for example, you register "SMARTBREW" for coffee machines (listed under class 11) and coffee beans (listed under class 30). Potential infringement situations include:

1. Clear infringement: Another business begins selling coffee machines using the name "SMARTBREW"
   • The alleged infringing mark is being used as a trade mark (it is on the machine and advertising).
   • The registered trade mark "SMARTBREW" and the alleged infringing mark "STARTBREW" are identical.
   • The alleged infringing mark is being used for identical products (coffee machines).
2. Possible infringement: Another business starts selling coffee filters using "STARTBREW".
   • The business is using “STARTBREW” as a trade mark (it is on the product packaging).
   • The registered trade mark "SMARTBREW" and the alleged infringing mark “STARTBREW” look similar and sound similar. Consumers might be confused about where they came from.
   • The mark is being used on related but not identical goods. Courts would consider how similar these goods are.
3. Unlikely to be infringement: A company uses "SMARTBREW" for completely unrelated goods like gardening tools.
   • The business is using “SMARTBREW” as a trade mark (it is on the product packaging).
   • The marks are identical, but the company uses the trade mark on goods that differ from the registered trade mark.
4. Not infringement: A coffee critique writes a review of the product entitled "Is SmartBrew worth the money?"
   • The article’s author is not using the word “SMARTBREW” as a trade mark.
5. Not infringement: Another company uses a different coffee-related name, like “CLEVER COFFEE”, for coffee machines.
   • The business is using “CLEVER COFFEE” as a trade mark.
   • However, “CLEVER COFFEE” and the registered trade mark “SMARTBREW” are too dissimilar. 

Navigating trade mark infringement can be complex and often requires legal expertise. Additionally, the registered trade mark must be legally valid. A registered trade mark may be challenged in court and sought to be cancelled during a claim of infringement. An expert can help navigate these issues and provide advice. This guide provides a starting point, but qualified professionals should assess specific cases.

[1] Trade Marks Act 1995 (Cth) s 120 (‘1995 Act’).

[2] Ibid ss 120(1)-(2).

[3] Ibid s 20.

[4] Ibid s 17.

[5] Ibid s 20.

[6] Ibid s 6 (definition of a ‘sign’).

[7] Ibid s 19.

[8] Ibid ss 120(1)-(2).

[9] Ibid s 120(2). For example, see MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236.

[10] Ibid s 120(3).

[11] For example, see Nintendo Co Ltd v Care (2000) 52 IPR 34, Australian Associated Motor Insurers Ltd v Australian Automotive Motor Inspection Centre Pty Ltd (2004) 60 IPR 92, and Virgin Enterprises Ltd v Virgin Star Pty Ltd (2005) 67 IPR 557.

[12] Coca Cola Co v All Fect Distributors Ltd (1999) 96 FCR 107, 115 citing Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326. See also, 1995 Act (no 1) s 17

[13] 1995 Act (no 1) s 120. See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 and Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326.

[14] Ibid.

[15] PepsiCo (Aust) Pty Ltd (t/a Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 33 IPR 161.

[16] Christodoulou v Disney Enterprises Inc (2006) 66 IPR 595.

[17] Chevron Global Energy Inc v Ampol Australia Petroleum Pty Ltd [2021] FCA 617

[18] Cf Pinnacle Runway Pty Ltd v Triangl Ltd (2019) 375 ALR 251.

[19] PepsiCo (Aust) Pty Ltd (t/a Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 33 IPR 161.

[20] Johnson & Johnson (Aust) Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326

[21] See, for example, Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167,  Top Heavy Pty Ltd v Killin (1996) 34 IPR 282. Cf the approach taken in Global Brand Marketing Inc v YD Pty Ltd (2008) 76 IPR 161 and Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107.

[22] Also known as ‘substantially similar’, Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407.

[23] 1995 Act (no 1) s 10 and Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407.

[24] London Lubricants (1920) Limited’s Application (1924) 42 RPC 264.

[25] Aristoc Limited v Rysta Limited(1943) 60 RPC 87.

[26] Jafferjee v Scarlett (1937) 57 CLR 115.

[27] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661.

[28] Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641.

[29] See In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (2020) 377 ALR 116

[30] 1995 Act (no 1) ss 120(2) and 14.

[31] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44.

[32] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

[33] 1995 Act (no 1) s 120(3).

[34] 1995 Act (no 1) s 122 (1)(a).

[35] Ibid s 122 (1)(b). See Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd (2020) 150 IPR 11.

[36] Ibid s 122 (1)(c). See  Gillette Co v Pharma-Goods (Aust) Pty Ltd (1997) 38 IPR 509.

[37] Ibid s 122 (1)(d).

[38] Ibid s 122 (1)(e).

[39] Ibid ss 122 (1)(f)-(fa).

[40] Ibid s 124.