Exceptions to infringement

It is not the case that every single use of a trade mark will be an infringement. Generally, the benchmark for trade mark infringement is consumer confusion. So where there is no likelihood of confusion arising from the use, then there may not be infringement.

Additionally, there will not be an infringement where the mark is being used descriptively. If the mark is only being used to indicate the kind, quality, purpose or some other characteristic of the goods or services, then the use will not be infringing.

The law also provides certain defences to trade mark infringement.

The spare parts defence

A trader may use a trade mark to indicate their goods or parts are compatible with the trade mark owner’s goods.

The comparative advertising defence

It will not be an infringement to use a trade mark in the process of comparing one trader’s products to another’s.

The second hand goods defence

It is not an infringement to use a trade mark in relation to goods where the mark has been applied to the goods with the consent of the trade mark owner.

The prior use defence

If a person has been using a mark that is substantially identical or deceptively similar to a registered trade mark since before that trade mark was registered, then they may be able to continue using the mark.