“Trademark Use - Infringement versus Non-Use – How do they compare?”
Country: Australia
(A) / Proper Use In Non-Use Cancellation Action
(B) / Remarks
(C)
1 / Use of CD record’s title identical to another person’s registered trademark / Much depends on the factual situation and the inherent distinctiveness of the mark in question, as well as whether the use as a title is actually trade mark use. In many cases it would not be trade mark use and so no infringement.
If there is TM use then infringement :
For identical goods or services [120(1)];
For similar goods or closely related services etc only if deception or confusion likely [120(2)] / Inadequate use to defend cancellation action since is not use by the owner or an authorized user. Indeed, in most cases is probably not considered use as a TM in any case. / If the registered mark is well-known, it may be infringed [120(3)] even if the goods and services are unrelated. However, there must be trade mark use by the alleged infringer.
2 / Use of a design mark on the whole front of T-shirts which is identical to another person’s registered trademark / Yes for identical goods (i.e. clothing)and also maybe where the T-shirts are merely promotional items used solely to promote products or services covered by the other person’s registration.
Also, where similar goods or closely related services are registered butonly if deception or confusion is likely. / Inadequate use to defend cancellation action since is not use by the owner or an authorized user. / Well-known mark may be infringed even for unrelated goods and services.
3 / Use of a mark on free gifts such as tissue which is identical to another person’s registered trademark / Distribution of samples and free gifts will not infringe unless there is use in commercial use in respect of the registered goods. Also, for similar goods or closely related services infringement will only arise if there is commercial useand only if deception or confusion likely. / Inadequate use to defend cancellation action since is not use by the owner or an authorized user. / Well-known mark may be infringed
even for unrelated goods and services but there must be commercial use being undertaken, which would not normally be the case if there is solely free distribution of gifts.
4 / Use of another person’s registered trademark for the purpose of notifying the usage of the goods (e.g. “Ink jet for CANON”) (Ink for Canon ink-jet printer) / Explicitly non-infringement provided in good faith to indicate intended purpose of the goods and TM not over emphasized. / Inadequate use to defend cancellation action since is not use, as a TM, by the owner or an authorized user
5 / Use on recycled and revived goods without removing its original registered mark / No, generally. / Inadequate – use by reviver does not accrue to owner because not under the control of the TM owner. / Infringement may exist: e.g. if a mark of the recycler deliberately incorporates (frames) the original mark.
6 / Use of a mark in the case where the mark is used not as a trademark but as a name of ingredients of food. / Not infringing provided it is a good faith indication of a characteristic of the food, namely a brand of ingredient used in its preparation. / Inadequate use to defend cancellation action unless it reflects trade mark use relating to the registration, which covers the ingredient and/or food.
7 / Use of another person’s trademark as a background scenery of his/her own advertisement / Generally yes but prominence of the mark or other factors may influence, such as whether comparative advertising can be claimed.
(assume same goods) / Not adequate in itself. However, it might be arguable if the background scenery was a reproduction of the owner’s own advertisement.
8 / Operating a website using the domain name with the indication of the mark on the relevant goods and services on the website / Only if it constitutes an explicit offer for sale to residents in the Australian jurisdiction that is capable of acceptance. Mere existence of the homepage indicating the goods and services is probably insufficient. / Not use as a trade mark of the owner in the jurisdiction unless it is an offer capable of acceptance by the Australian public. If not, then not a defence to non-use actions.
9 / Trademark use on the Internet in the case the server exists outside of the jurisdiction while the purchasing of the goods and services are available in the relevant jurisdiction on the Internet / Yes, infringes. / Yes, normally the transactions would be sufficient to constitute proper use in the jurisdiction.
10 / Indication of another person’s mark in a comparative advertisement / No infringement so long as done accurately and a genuine comparison is being made. / Not applicable