The answer is no, although commercial use often infringes a registered trade mark, so a business needs to be careful to avoid trade mark infringement.

Nonetheless, if you make commercial use of a trade mark that is similar to a registered trade mark, there are a number of reasons why you may not infringe the registered mark.  This blog is the first in a series of blogs about some of the reasons why a trade mark registration may not be infringed.

This blog will concentrate on the so-called “descriptiveness defences”:  However, my comments are necessarily a simplification of the law.  The outcome of any dispute will depend on the facts of each case. 

Trade mark cease and desist letter

A trade mark infringement dispute usually starts with the sending of a cease and desist letter from a trade mark owner claiming infringement of a registered trade mark.  I blogged about cease and desist letters here. 

If you receive a letter claiming that you have infringed someone’s trade mark the best thing to do is to quickly seek advice from an experienced trade marks lawyer.  Trade marks law is highly complex and so, when looking for a lawyer, make sure their website says they work in trade marks law. 

Trade marks should not be descriptive

It may surprise some businesses that a “good” trade mark, from a trade mark law perspective, is not one that describes the goods or services.  The purpose of a registered trade mark is to distinguish one trader’s goods or services from those of another trader – so that you know that COCA-COLA is different to PEPSI.  Thus, APPLE is a “good” trade mark for computers but a very poor trade mark for apples. 

If a trade mark is not directly descriptive of the goods or services but contains a “skilful allusion” to them, that is a “good” trade mark.  For example, the mark TUB HAPPY, registered for clothes, contained a “skilful allusion” to the washability of the clothes, but no one ever said “my clothes were tub happy today!”  Marketing departments need to be creative when devising new trade marks so that they do not cross the line between skilfully alluding to a characteristic of the product and directly describing it.

Descriptiveness defences

A trade mark that describes the goods or services may not be able to be registered.  Even if it is registered, use that is purely descriptive is unlikely to infringe because:

1. the mark is not “used as a trade mark”; and/or
2. the mark is used in good faith to describe a characteristic of the goods or services; and/or
3. the registered trade mark has become generic because other traders have been using it as the name of their goods or services.

1. Use as a trade mark

To infringe a registered mark a business must use its mark “as a trade mark”. This means that a mark be used as a badge of origin – to refer to the source of the product (even if the name of the manufacturer or supplier is unknown).  If the registered mark is for ICY in logo format and a business describes their product as “ICY COLD DRINKS”, this would not infringe the registration because the word ICY is not used “as a trade mark”. 

Whether a mark is “used as a trade mark” depends on the context of the use, including the meaning of the words, how the words appear and the surrounding words and other material on the packaging or website.  Thus, words may be used as a trade mark in one context and not in a different context.

The concept of “use as a trade mark” is the most difficult concept in trade marks law.  Legal advice should be sought before trying to argue that this applies to your case.

2. Good faith descriptive use

This is a similar defence but has an additional requirement that the use is in good faith and not for an ulterior purpose.

If a business was not aware of a registered trade mark when it uses a similar mark, it is difficult to rely on this defence because all businesses are expected to check whether they are legally able to use any new mark.  This usually involves conducting searches, including of the Trade Marks Register, and possibly seeking legal advice.  If a trader did know about the registered trade mark, they will need to show why they believed that they would not infringe (usually by producing legal advice). 

I discussed this “good faith” issue in my blog about The Practice case here. 

3. Generic trade marks

Trade marks, like the English language itself, can change. If rival traders start using a trade mark as the name of their product, the trade mark could become generic.  If that happens, the mark will lose its exclusivity and can be removed from the Trade Marks Register.

It is rare for a trade mark to become legally generic in Australia because it is not enough that consumers refer to all brands of a product by the one trade mark eg DOONA.  The law requires that the mark must be used generically by traders in those goods or services.  Normally a trade mark owner will try to stop this from happening.

Don’t try to make someone else’s mark generic.  Johnson & Johnson Australia Limited tried to do that in the 1990’s with Sterling Pharmaceuticals’ registered mark CAPLETS.  The Full Court of the Federal Court was not impressed by this “ulterior motive” and held that this prevented them from relying on a defence of “good faith” descriptive use. 

Risks of infringement

If a business adopts a mark that is similar to a registered mark on similar goods or services for the purpose of gaining a commercial benefit, especially if they hope to divert trade from the trade mark owner, this is high risk behaviour.  It is unlikely to fall within any of the descriptiveness defences. 

Infringing a registered trade mark can be costly.  You may have to stop selling your product, rebrand, hand over material bearing the infringing mark to the trade mark owner and pay both compensation to the owner and your own lawyers’ fees.

Receiving a cease and desist letter

If you receive a cease and desist letter claiming trade mark infringement and you believe that you are only using words descriptively, consult a trade marks lawyer who can advise you about this and raise this point with the trade marks owner. 

However, if the owner makes it clear that they are going to sue you, you need to conduct a cost/benefit analysis to determine whether it is worth defending a court case or whether it is better to compromise and cease use of your mark, possibly negotiating a sell-out period for existing stock.

I have acted in many trade mark infringement matters, both sending cease and desist letters on behalf of clients and advising clients who have received them.  I can help both trade mark owners and recipients of cease and desist letters.

This blog provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a lawyer if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2025