AGL v Greenpeace: What Constitutes Trademark Infringement? – Intellectual property

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Intellectual property (IP) is an important asset to your business. It makes sense that many companies take preventative measures to prevent people from infringing on their intellectual property. But you may not know if someone’s unauthorized use constitutes trademark infringement under Australian law.

A court case between AGL and Greenpeace demonstrates the importance of understanding trademark infringement. In this article, we’ll outline what you should consider before alleging trademark infringement, analyzing the rulings from this court case.

AGL v Greenpeace Australia Pacific Limited

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AGL sued Greenpeace for alleged copyright and trademark infringement. These were posters created by Greenpeace that used the AGL logo. Greenpeace’s alleged wrongful conduct consisted of various visual media on various platforms using AGL’s logo alongside the slogan ‘Australia’s Greatest Liability’.

Greenpeace argued that their use of AGL’s logo did not constitute trademark infringement because they did not use the logo as a trademark (i.e. to identify the source of goods and services) . Ultimately, the court accepted this argument.

Why did they agree?

Your registered mark will be infringed if someone uses it in relation to the goods or services covered by your registration. In this case, Greenpeace had not used the logo with respect to the claimed goods or services. In the Court’s view, consumers viewing the banner ads or street signs would not view them as advertising or promoting AGL’s goods and services. Instead, the Court found that Greenpeace’s use of AGL’s logo provided Australian consumers with what they viewed as factual information about the environment. They also use the logo to criticize AGL’s conduct.

Potential impact on your business

The AGL case reinforces a few points regarding trademark infringement.

What does a trademark provide?

A registered trademark gives you a monopoly on the use of the mark relating to the registered class of goods and services. This means that although you have the exclusive right to use a word or image, it will only ever be in relation to a finite list of goods and services.

For example, you may have a registered trademark for the word STUNNING LIGHTS relating to retail services and lighting fixtures. However, if someone has started using this mark in relation to wine, an infringement action may be difficult to establish.

When should you allege an infringement?

A successful infringement action will depend on how the trademark has been used. In general, there will be infringement if someone uses it in relation to the goods and services claimed under your registration. Infringement may also occur if someone uses the trademark regarding associated goods and services.

For example, suppose someone starts using STUNNING LIGHTS regarding electrician services. In this case, you may have grounds to claim trademark infringement.

Is your brand used as a trademark?

A trademark identifies a business and the goods and services provided by that business. In the AGL case, Greenpeace successfully defended the infringement action against them. Indeed, they did not use the mark to identify their goods or services. Instead, they were “criticizing” the company that owned the mark.

Consider this before alleging an infringement. For example, has the other party used it as a trademark (i.e. to identify and promote its business)?

Things to consider when applying for a trademark

The case highlights many points of Australian trade mark law, but fundamentally reinforces the importance of an accurate list of specifications. When applying for a trademark, you must select a number of classes representing a group of related goods and services.

For example, Class 9 covers software and electronic products.

To help illustrate this point, consider your own business. For example, if you have a trademark for your business name or logo, it must be registered with respect to the goods and services you offer as part of your business. Next, suppose someone starts using a deceptively similar or substantially identical name or logo to promote their own business for the same goods and services covered by your trademark. In this case, they may be liable to an action for infringement.

In addition, an inaccurate list of goods and services potentially makes you vulnerable to a third party using the mark in respect of goods and services not covered by your application and filing an application for an identical mark in respect of those goods and services, thereby preventing you from benefiting from ‘a protection.

Future goods and services

If you’re filing your trademark application now, you may be planning to introduce new products and services that you haven’t started offering. This is great, and if you intend to implement them within three years of filing your application, you should consider including them in your application.

As long as you implement these intended products and services within three years of application, your brand will not be vulnerable to removal for non-use.

Key points to remember

Trademarks are an important part of every business. You must make sure you understood correctly the first time when you submit your application. Since the AGL and Greenpeace case, you must remember to register your mark for the goods and services for which your company will use it. There will be infringement if a mark is used as a mark in an unauthorized manner in relation to the goods and services covered by the registration. You should seek legal advice if you believe someone is infringing your trademark. If you need help with a trademark infringement issue, our experienced trademark attorneys can help. Call them on 1800 534 315 or fill out the form on this page to get in touch.

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