If you own a registered trade mark it means you have the exclusive right to use that mark. In other words, a competitor cannot use your mark on their competing products. However, there are circumstances where someone could legitimately use your trade mark.

The Australian Trade Marks Act, generally speaking, allows someone to honestly describe their products or services. Using a normal English word in a descriptive sense will, in most cases, be acceptable. For example, if there is a registration for PREMIUM, another person could describe themselves by saying “we provide a premium service to our clients”. The use of “premium” in this context is purely descriptive and not used as a trade mark.

A number of cases provide some guidance as to what is considered fair use:

Case 1

Nature’s Blend sought trade mark registration for LUSCIOUS LIPS for confectionary. Their competitor Allen’s developed a bag of confectionary called RETRO PARTY MIX, which included 7 lolly varieties. On the packaging a blurb included:

All your old favourites are back, so put on those flares & get ready to party! Up to 7 lolly varieties including … freeeekie Teeth, luscious Lips, partying Pineapples…”

Nature’s Blend objected to the use of LUSCIOUS LIPS, however, the Court found that the use of “luscious Lips” on the packaging was not infringing as the words were used descriptively and the Allens brand was prominent.

Case 2

Berzins Specialty Bakers had the trade mark PRITIKIN for bread, rolls and muffins. Pritikin was also the surname of an American who was well known for his opinions on health and diet. At the time, “Pritikin” was commonly used as an adjective to express conformity with Mr Pritikin’s opinions.

Monty’s Continental Bakery manufactured bread they argued, conformed to Mr Pritikin’s opinions and labelled it in the form:

Wholemeal

Pritikin

style bread

Monty’s argued that they did not use the word Pritikin as a trade mark but rather in a descriptive sense. The Court noted that the word PRITIKIN was in a distinctly larger font and a different colour contrast. As a result, the Court determined that Monty’s were infringing Berzins’ trade mark and the use was not fair.

Case 3

Faulding owned a trade mark registration for BARRIER, and used the mark on skin protective cream. ICI also produced a skin protective cream which included the words “a BARRIER cream” on the packaging. There was evidence that the word “Barrier” was being used to describe protective creams.

The Court found that ICI were using the word BARRIER as a reference to the character or quality of its cream, and that the word BARRIER can be regarded as a correct description of the creams. However, the Court still found against ICI as their use of BARRIER on their packaging was not purely for the purpose of description. The Court found the relative size of the words on the packaging and the colouring of the words were designed to promote the sale of the defendant’s cream by exploiting the possibility of confusion.

Case 4

“Willoughby’s Caterpillar Loader Hire Service” was a registered business name. The business hired out front-end loaders that had been manufactured by the Caterpillar Tractor Co. The business argued that their use of “Caterpillar” was descriptive of the service they provided, or that it was used in good faith to describe the character or quality of their service. The Court disagreed.

The Court found a clear intention to use the word “Caterpillar” in a prominent place in the name and, in doing so, conveyed a connection with the trade mark owner that did not exist.

Case 5

Mr Mai imported and supplied various aftermarket products such as mobile phone covers and neck straps that displayed the Nokia trade mark. Mr Mai argued that the use was fair as it showed his covers and other products were suitable for use with Nokia mobile phones.

The Court found that Mr Mai infringed the rights of Nokia. The use of the Nokia brand indicated a connection with Nokia that did not exist. For a fair use defence, more specific language such as “suitable for Nokia mobile phones” should have been used.

Conclusion

The Act provides for the fair use of registered trade marks. However, the Courts have not accepted use which goes beyond being purely descriptive. If a word is given particular prominence – either through the relative size of the font or colouring – it is likely that the Courts will determine the use is seeking to gain some benefit.

In cases 2 and 3 above, the fact that the defendant in both cases had given the trade marked word prominence, led the Court to the view that they were trying to make unfair reference to the trade mark. A similar issue arose in Case 4. The Court did not believe that the word CATERPILLAR needed to be included in the business name. The defendants in that case could have omitted the word from their business name and then considered including a descriptive phrase to inform customers. For example, the phrase “we only supply Caterpillar branded front-end loaders” may have been accepted.

Finally, in Case 5, Mr Mai would have been better placed had he not used the NOKIA brand, and rather used a phrase like “mobile phone covers suitable for use with Nokia mobile phones”.

Should a person elect to use the trade mark of another party, the Court will consider the bona fides of that use. If the person uses English words descriptively, and does not make a trade marked word prominent, the use will likely be acceptable. Conversely, if through use or other reasons the Court determines that the person is seeking to make improper gain by the use of the trade mark, they will likely be found to infringe.