The Law Handbook 2024

774 Section 7: Consumers, contracts, the internet and copyright relevant trade marks are located. Remember that using a trade mark that is ‘deceptively similar’ to another trade mark may infringe that trade mark. When searching for trade marks, also try to locate unregistered common law trade marks that may be used in Australia (because, as noted above, trade mark use can confer rights on the user at common law that may still be infringed by use of that mark or a deceptively similar mark). Defences to a claim of infringement Not all uses of a trade mark infringe a trade mark registration. The TM Act (s 122) sets out defences to an infringement claim. These defences include: • use in good faith of the name of the person using the trade mark, or the name of the person’s place of business; • use in good faith of a predecessor in business’ name or place of business; • use in good faith to indicate the kind, 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; • use for the purposes of comparative advertising; • use in exercise of a right given under the TM Act; • use where a court is of the opinion that the person using the trade mark would obtain registration of the mark if they were to apply for it; • use that does not infringe the trade mark registration because of a condition or limitation applicable to the registered trade mark. The expression ‘use in exercise of a right given under the TM Act ’ means that obtaining registration of a trade mark ensures that use in relation to the goods or services covered by the registration does not infringe another registered trade mark. The expression ‘use where a court is of the opinion that the person using the trade mark would obtain registration’ means that if an allegedly infringing mark has been used to such an extent that a court finds that it would qualify for acceptance for registration on the grounds of prior use or honest concurrent use, then the continued use of the mark for the relevant goods or services does not infringe. Other defences are also specified in the TM Act. Prior use – that is, use of the mark in Australia by the alleged infringer before the date of the trade mark’s registration and its earliest use by the owner – is a defence under section 124. Use of a mark in relation to goods or services where the mark has been applied to the goods, or applied in relation to the goods or services with the consent of the registered owner of the mark, does not infringe under section 123. This last section provides a defence in cases of ‘parallel importation’ (see ‘Using trade marks overseas’, below). Using trade marks overseas Rights conferred by using and registering a trade mark inAustralia do not extend to other countries. Similarly, a trade mark that has been registered overseas but not registered in Australia is not protected in Australia under the TM Act. However, if a trade mark that has not been registered in Australia has acquired a reputation in Australia due to extensive use overseas, that reputation may confer protectable rights on the trade mark owner at common law. Australia is a ‘first to use’ country, so that the first person to use a trade mark in Australia can claim ownership of a trade mark arising from that first use, and use this to defeat an application filed later. This applies even if the level of use is very low. The majority of overseas countries operate on a ‘first to file’ principle, where prior use of a trademark in that country cannot defeat an application filed by another person. Different countries have different requirements; in some, sufficient prior use to acquire a significant reputation may be a basis to oppose a later filed application, but in other countries a mark has to be ‘famous’ or very well known. Australian trade mark owners who have goods manufactured overseas should consider seeking protection in the country of manufacture, particularly if it is a first to file country. This will avoid a third party registering the mark and then preventing the continued application of the mark to the manufactured goods in that country. The Paris Convention Australia is a signatory of the Paris Convention . If protection of a trade mark is sought in another country within six months of applying to register the