A trade mark serves as a badge of origin of particular goods and/or services. One of the benefits of having a registered trade mark is that the owner of the trade mark can enforce their trade mark rights against someone who is using their registered trade mark to sell their similar goods or services. However, certain instances of use of a registered trade mark can be considered “fair use”. This allows a party to legitimately use another person’s trade mark without infringing the trade mark.
Fair use of trade marks is classified into two parts namely, descriptive fair use and nominative fair use.
Descriptive fair use is when someone’s registered trade mark can be used in good faith to describe the user’s products or services. This usually happens when the trade mark in question has a descriptive meaning in addition to its secondary meaning as a trade mark. However, in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438, it was held that the use of the term “Living Water” was found to infringe a registered trade mark which was owned by Wellness Pty Ltd. The court found that the use of the words“Living water” by Pro Bio was neither descriptive of the goods nor reasonably necessary for adequate description of the goods. Therefore, the court did not consider Pro Bio’s use of the words “Living water” to constitute fair use.
Nominative fair use is when the use of another’s trade mark to refer to the trade mark owner’s actual goods and services associated with the mark is permitted. Nominative fair use is allowed if:
One example of nominative fair use is the use of the “Barbie” trade mark in a parody or criticism by a certain photographer. His work would not have been identifiable without the use of the trade mark “Barbie.”
The Federal Court recently overturned the Hearing Officer’s decision and has found Puma’s application for PROCAT is deceptively similar to Catepillar’s registrations incorporating CAT.
The existence of brands in the marketplace which are similar to your trade mark may confuse or mislead consumers that the goods and services of the brands are of the same source. It also dilutes the exclusivity of your trade mark right. You can prevent such incidents from happening by monitoring your trade marks.
Zig Zag Hub, a coworking space in Wollongong NSW, wins against a trade mark opposition despite the number of grounds raised by the opponent. Find out how we did it and why it’s worth defending your trade mark application.
Famous well-known brands vigorously defend their brand from infringement. Famous brands are generally worth hundreds of millions or billions of dollars. However, has Apple Inc been overzealous in their efforts to stop a company with a ‘pear’ logo from operating? This case has not yet been resolved.
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