Part 13INFRINGEMENT OF TRADE MARKS

PART 13—INFRINGEMENT OF TRADE MARKS When is a trade mark infringed? 129.(1) A person infringes a registered trade mark if the person uses in the course of trade a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered, (2) A person infringes a registered trade mark if the person uses in the course of trade a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services that are of the same description as, or are closely related to, goods or services in respect of which the trade mark is registered. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign in that way is not likely to deceive or cause confusion. (3) A person infringes a registered trade mark if: (a) the trade mark is well known in Australia; and (b) the person uses in the course of trade a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services (“unrelated goods or services”) that are not: (i) goods or services in respect of which the trade mark is registered; or (ii) goods or services of the same description as, or closely related to, goods or services in respect of which the trade mark is registered; and (c) because of the use of the sign by the person: (i) the unrelated goods or services are likely to be mistaken as goods or services dealt with or provided by the registered owner of the trade mark; and (ii) for that reason, the interests of the registered owner are likely to be adversely affected. Infringement of trade mark by breach of certain restrictions 130.(1) This section applies to a registered trade mark if the registered owner or a registered user of the trade mark has caused to be displayed on goods in respect of which the trade mark is registered, or on their package, or on the container in which they are offered to the public, a notice (“notice of prohibition”) prohibiting any act that is under subsection (2) a prohibited act in relation to the goods. (2) Each of the following is a prohibited act: (a) applying the trade mark to the goods, or using the trade mark in relation to them, after the state, condition, get-up or packaging in which they were originally offered to the public has been altered; (b) altering, or partially removing or obliterating, any representation of the trade mark applied to the goods or used in relation to them; (c) if the trade mark has been applied to the goods, or used in relation to them, together with other matter indicating that the registered owner or user has dealt with the goods—removing or obliterating, totally or in part, any representation of the trade mark without totally removing or obliterating the other matter; (d) applying another trade mark to the goods or using another trade mark in relation to them, (e) if the trade mark has been applied to the goods or used in relation to them—using on the goods, or on the packaging or container of the goods, any matter that is likely to injure the reputation of the trade mark. (3) Subject to subsection (4), a person infringes a trade mark to which this section applies if the person: (a) is the owner of goods in respect of which the trade mark is registered; and (b) in the course of trade, or with a view to a dealing with the goods in the course of trade: (i) does an act that is prohibited under the notice of prohibition; or (ii) authorises that act to be done. (4) The trade mark is not infringed if the owner of the goods: (a) acquired them in good faith and without being aware of the notice of prohibition; or (b) became the owner of the goods by virtue of a title derived from a person who had so acquired them. When is a trade mark not infringed? 131.(1) In spite of section 129, a person does not infringe a registered trade mark when: (a) the person uses in good faith: (i) the person’s name or the name of the person’s place of business; or (ii) the name of the person’s predecessor in business or the name of the predecessor’s place of business; or (b) the person uses a sign in good faith to indicate: (i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or (ii) the time of production of goods or of the rendering of services; or (c) the person uses the trade mark in good faith to indicate the intended purpose of: (i) the goods (in particular as accessories or spare parts); or (ii) the services; or (d) the person uses the trade mark in good faith for the purposes of comparative advertising; or (e) the person exercises a right to use a trade mark given to the person under this Act; or (f) the person, in using the trade mark or a sign in a manner referred to in section 129, does not infringe any right of the registered owner to use the trade mark. (2) In spite of section 129, if a disclaimer has been registered in respect of a part of a registered trade mark, a person does not infringe the trade mark by using that part of the trade mark. Goods to which registered trade mark affixed by or with consent of registered owner 132. In spite of section 129, a person who uses a registered trade mark in relation to: (a) goods in respect of which the trade mark is registered; or (b) goods that are of the same description as, or are closely related to, goods in respect of which the trade mark is registered; does not infringe the trade mark if a representation of the trade mark has been applied to the goods by, or with the consent of, the registered owner of the trade mark. However, except in the case of second-hand goods (see section 134), the trade mark is infringed if the goods have been changed or impaired after they have been put on the market. Prior use of identical trade mark etc. 133.(1) A person does not infringe a registered trade mark by using an unregistered trade mark that is substantially identical with, or deceptively similar to, the registered trade mark if the person, or the person and the person’s predecessor in title, have continuously used the unregistered trade mark in the course of trade from a time before: (a) the date of registration of the registered trade mark; or (b) the registered owner of the registered trade mark, or a predecessor in business, or a registered user of the trade mark, first used the trade mark; whichever is earlier. (2) If the unregistered trade mark has continuously been used only in a particular area of Australia, subsection (1) applies only to the use of the trade mark by the person in that area. Second-hand goods 134.(1) This section applies if: (a) second-hand goods to which or in relation to which a representation of a registered trade mark is applied are put on the market; and (b) the registered owner, or a registered user, of the trade mark has not consented or approved that the goods be put on the market in the condition in which they are. (2) In spite of section 129, a person who trades in the goods does not infringe the trade mark if: (a) the person indicates clearly that the goods are second-hand goods; and (b) the changes, alterations or repairs that have been made to the goods are not so extensive or fundamental that the goods can no longer reasonably be regarded as possessing the main characteristics, qualities or attributes inherent to the goods when they were new. What courts may hear action etc. for infringement of registered trade mark 135.(1) An action for an infringement of a registered trade mark may be brought in a prescribed court. (2) Subsection (1) does not prevent an action for infringement of a registered trade mark from being brought in any other court that has jurisdiction to hear the action or proceeding. What relief can be obtained from court 136. The relief that a court may grant in an action for an infringement of a registered trade mark includes: (a) an injunction, which may be granted subject to any condition that the court thinks fit; and (b) at the option of the plaintiff but subject to section 137, damages or an account of profits. Special case—plaintiff not entitled to damages etc. 137. If: (a) in an action for the infringement of a trade mark registered in respect of particular goods or services, the court finds that the defendant has infringed the trade mark; and (b) the defendant has applied to the court under subsection 92(3) for an order directing the Registrar to remove the trade mark from the Register in respect of those goods or services; and (c) the court finds that, because the trade mark has not during a particular period (“critical period”) been used in good faith by its registered owner in relation to those goods or services, there are grounds (under subsection 92(4)) for so removing the trade mark from the Register; the court may not grant relief to the plaintiff by way of damages or an account of profits in respect of any infringement of the trade mark that happened during the critical period. Groundless threats of legal proceedings 138.(1) If a person threatens to bring an action against another person (“threatened person”) on the ground that the threatened person has infringed: (a) a registered trade mark; or (b) a trade mark alleged by the person to be registered: any person aggrieved by the threat (“plaintiff”) may bring an action (either in a prescribed court or in any other court having jurisdiction) against the person making the threat (“defendant”). (2) The purpose of the action is to obtain from the court: (a) a declaration that the defendant has no grounds for making the threat; and (b) an injunction restraining the defendant from continuing to make the threat. The plaintiff may also recover any damages that he or she has sustained because of the defendant’s conduct. (3) The action may be brought whether or not the defendant is the registered owner, or a registered user, of the trade mark alleged to have been infringed. (4) The court may not find in favour of the plaintiff if the defendant satisfies the court that: (a) the trade mark is registered; and (b) the acts of the plaintiff in respect of which the defendant threatened to bring an action constitute an infringement of the trade mark. (5) An action may not be brought, or (if brought) may not proceed, under this section if the registered owner or a registered user of the trade mark, with due diligence, begins and pursues an action against the threatened person for infringement of the trade mark. (6) This section does not make a lawyer or patent attorney liable to an action for an act done in a professional capacity on behalf of a client. Counterclaim by defendant in action on groundless threats 139. If the defendant in an action brought under section 138 would be entitled to bring against the plaintiff an action for infringement of the registered trade mark (“infringement action”): (a) the defendant may file in the court a counterclaim against the plaintiff for any relief to which the defendant would be entitled in the infringement action; and (b) the provisions of this Act applicable to infringement actions apply in relation to the counterclaim as if it were an infringement action brought by the defendant against the plaintiff.