It is well known that trade mark registration gives the owner exclusive rights to prevent others from using identical or even similar trademarks. Infringement, when proven, can lead to serious consequences such as monetary damages and even criminal remedies including imprisonment (Section 92, Trade Marks Act 1994). In this post, we will discuss the common defences for trade mark infringement.
When does trade mark infringement occur?
The purpose of having trade mark protection is to ensure that the registered trade mark acts as a ‘guarantee of origin’. If a consumer buys running shoes from Nike, they are assuming they bought from the sporting goods giant and not a copycat. Trade mark infringement occurs when someone uses a trade mark without permission from the trade mark owner for the purpose of trade.
If someone was selling running shoes with Nike’s branding, and neither they nor the shoes have any relation to Nike, they are infringing Nike’s trade mark.
What are the defences against trade mark infringement?
If you have been accused of trade mark infringement, there are defences available against trade mark infringement, and we list them as follows.
- If you are using a registered trade mark for your specified goods and services when you have been accused of trade mark infringement.
- If you use your own name and address, which is in accordance with honest practices. This defense only applies to a person’s name and not the name of a company
- If the allegedly infringed trade mark consists of characteristics of the goods or services, such as kind, quantity, quality, intended purpose, value, geographical origin or time of production. An example of this could be ‘Peruvian Dark Chocolates’.
- If the allegedly infringed trade mark indicates the intended purpose of a product or service. An example could be ‘Floor Varnish Pads’.
- If you have an earlier right in the mark in an area you trade in.
If a claim for trade mark infringement is flawed, it can be successfully overcome, but there needs to be a well thought out response if any of the defences mentioned above are used.
Are these trade mark infringement defences enough?
There still might be issues with some defences for example, if you argue that the trade mark being accused of infringement is descriptive of characteristics, the other trade mark might have acquired reputation in the marketplace, and it could have a unique work combination.
A trade mark owner has the right to bring an action for infringement if someone is using a trade mark without permission, however, there are defences and options available to overcome a claim, which is why you need assistance from legal professional who specialize in trade marks.