1. What are trade marks?
A trade mark is any sign used to distinguish goods or services of one trader from those of another. A sign includes a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.(1) A trade mark owner has, subject to certain exceptions, the exclusive right to use and apply the trade mark to particular goods and services and to authorise other persons to use the trade mark by way of a licence.
2. How to protect trade marks in Australia?
Trade marks may be protected in Australia:(2)
(a) by registration with IP Australia (see http://www.ipaustralia.gov.au) under the Trade Marks Act 1995 (Cth) ;
(b) at common law by an action known as the tort of passing off; or
(c) by the misleading and deceptive conduct provisions of the trade practices legislation.
3. Trade marks and the internet
Trade marks may be used and infringed in the compilation and design of web site material. A person or organisation that uses a third party trade mark as a badge of origin or quality (eg using a third party trade mark as a hyperlink) without permission will breach the owner’s trade mark rights.
The part of a domain name which is distinctive (eg OzNetLaw in http://www.OzNetLaw.net) can be a trade mark. A domain name may infringe the rights of a trade mark owner where the trade mark is similar or substantially similar to the domain name. Infringement of a trade mark requires "use as a trade mark". If the domain name is merely registered but there is no use in the course of trade, infringement is unlikely.(3) A domain name identical with a trade mark (that is not well known) will not infringe the trade mark if the domain name relates to entirely different goods or services. The reverse result may arise if the trade mark is well known.(4) The registration of a trade mark in Australia does not mean its use will not infringe other parties’ trade marks outside Australia.
4. Protecting trade marks and avoiding trade mark violations on your website
Develop and implement procedures for managing the use of trade marks on your website to
prevent accidental breach of a third party’s trade mark rights.
If a trade mark is used on a website to describe a product that is legally being sold, it would be difficult for the trade mark owner to claim an infringement of its rights. A note should be made on the website stating the owner of the trade marks which have been used. If there are any doubts as to whether the use of the trade mark would be permitted by the owner, written permission should be obtained before the marks are used. The customer and developer should clarify who has the responsibility to determine whether trade marks used on the site infringe any other parties’ intellectual property rights.
Include trade mark protection provisions in the terms and conditions of use of your website, including where appropriate, any legitimate use of your trade marks and procedures that need to be followed in relation to such use.
Your website development agreement should cover ownership and licenses for intellectual property (including trade marks) and should provide indemnities for any breach resulting in loss.
5. Potential trade mark problems with interactive websites
Where users are permitted to upload files or content to your website, you can reduce the associated legal risk of trade mark infringement as follows:
(a) Specify in the terms and conditions of website use:
* you are authorised to use and remove the uploaded files or content;
* you are not responsible for determining what content is uploaded;
* people posting material to the site indemnify you for any loss arising from trade mark infringement; and
* non-liability to readers for trade mark infringement.
(b) Implement procedures to remove infringing material upon notification and consider implementing an audit policy to regularly review and remove infringing material. See Terms and Conditions of Website Use.
Other relevant Articles on this site:
Terms and conditions of website
Trade practices and consumer protection
Other relevant Fact Sheets:
Misleading and Deceptive Conduct
Trade Marks, Domain Names and Passing Off
End Notes
1. Trade Marks Act 1995 (Cth)
br> 2. See generally P Hourigan ‘Domain Names and Trade Marks: an Australian Perspective’ in Going Digital 2000: Legal Issues for E-commerce, Software and the Internet (2000)
3. Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161
4. Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161; Panavision International LP v Toeppen (US District Court of Appeal, No 97-55467, 17 April 1998)