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Businesses use trade marks as identifiers for their goods and services to distinguish themselves from competitors in the market. If a business registers a trade mark, then this means that they have the exclusive right to use that mark and have the ability to stop other people from using similar or identical marks. However, suppose you have unintentionally used the trade mark of another business. In that case, they can commence trade mark infringement proceedings, and you could have a potentially costly legal battle on your hands. If this happens, you should be aware of what defences are available to you and whether you are entitled to rely on any of those defences. This article will explain what trade mark infringement is and how you can defend your business against it.

What Does Trade Mark Infringement Mean?

Businesses register a trade mark with the Intellectual Property Office of New Zealand and gain the exclusive right to use that mark. Such trade marks could be a:

  • brand name;
  • logo;
  • slogan; or
  • product name.

If your business uses a mark similar or identical to another party’s mark, they could potentially have a claim of trade mark infringement against you. This means that your trade mark has the potential to deceive or mislead customers about whose goods or services it covers because it is identical or deceptively similar to that other party’s registered trade mark.

For example, say your business sells stationery under the name ‘MELON’. Suppose another business that sells stationery has a registered trade mark for ‘MELLON’. In that case, they could potentially send you a cease and desist letter alleging trade mark infringement as a precursor to commencing proceedings against you.

But, you may have some defences available to you against claimed trade mark infringement. These include:

Goods or Services Not Covered by Registration

When a business registers a trade mark, they have to specify what classes of goods or services are covered by the trade mark registration. For trade mark infringement to occur, the use of the trade mark generally must concern those same or similar goods or services. This is unless the situation is that the trade mark is so well known in New Zealand that your use of the trade mark would take unfair advantage of that unique reputation to its detriment.

For example, if ‘MELLON’ was registered in respect of skincare products, while you used your ‘MELON’ trade mark concerning stationery, then they likely could not claim trade mark infringement. This is unless the registered trade mark is so well-known that use on any goods or services (even a different category) would be likely to confuse.

Honest Practices

A possible defence is that you used the trade mark honestly in the course of your business. It is not trade mark infringement if your mark includes either:

  • your name or the name of your place of business; or
  • the name of a predecessor or that predecessor’s place of business.

For example, if your last name was Suzuki and you run a car rental business called “Mr Suzuki’s Car Rentals,” you could potentially argue that you were not infringing on the car manufacturer’s trade mark. You can only prove such a point if you can satisfy the court you were doing so honestly.

This defence also applies to your use of the trade mark in a descriptive sense, as long as you do so in good faith. This means that you use the trade mark to indicate the:

  • kind;
  • quality;
  • quantity;
  • intended purpose;
  • value;
  • geographic origin;
  • time of production or provision of services; or
  • other characteristics of goods or services.

This also applies to describing your product as accessories or spare parts. If you advertise that your goods serve as a good accessory or spare part to another product that is a registered trade mark, then that generally would not qualify as infringement.

However, you should note that you can only use this defence if you can prove that you used the trade mark descriptively without trying to benefit from the reputation of the other business associated with that trade mark.

Comparative Advertising

If you referred to the other business’s trade mark in your advertising as a point of comparison, that is a potential defence to an infringement claim. This will only apply if you made the comparison without:

  • being misleading or inaccurate;
  • taking unfair advantage of the distinctive character or reputation of the trade mark; or
  • damaging this distinctive character or reputation.

Continuous Use of an Unregistered Trade Mark

A further defence you could use relates to whether you have existing unregistered trade mark rights and how long you have been using them. If you can prove that you have continuously used your unregistered trade mark, then you may qualify for this defence. Continuous use means you have used the unregistered trade mark before and earlier than the date that the:

  • other party applied to register their trade mark; or
  • owner of the other trade mark (or their predecessor) first used the trade mark.

Key Takeaways

It can be alarming if you suddenly receive a cease and desist letter alleging infringement of a trade mark that you had no idea existed before you received said letter. But, there may be some defences available to you, provided you meet the conditions to rely on them. If you would like more information or help with trade mark infringement, contact LegalVision’s New Zealand IP lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

How can I defend a trade mark infringement claim?

You can defend a trade mark infringement claim if you can prove that you were already using the trade mark before it was registered, or you were using it in a descriptive sense.

Can I mention another business’s trade mark in advertising?

Yes, in many circumstances, you can refer to another business’s trade mark in comparative advertising, as long as you do so without damaging its reputation or relying on said reputation to profit for your own business.

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