This blog is one of a series I am publishing about defences to infringement of another’s intellectual property.  I have blogged about descriptive use of trade marks here and if a business is the first use a mark here.  But what if you are using your own name or a geographic name?

Own name and place of business defences

The Trade Marks Act provides that a registered trade mark is not infringed when the person uses in good faith:

  (i)   the person’s name or the name of the person’s place of business; or

  (ii)   the name of a predecessor in business of the person or the name of the predecessor’s place of business.

The “predecessor in business” is a person who owned the business before the current business owner.  Thus, if someone bought the business “John Smith’s Kitchens” from John Smith, they could continue to use this name and rely on the “own name defence”.

Place of business

It is very common for businesses to incorporate the place of the business in a business name – the street name, suburb, town etc – for example “Melbourne Tax Accountants”.  The Trade Marks Act allows this.  If the name is adopted in good faith, this will not infringe a registered trade mark.

In addition, geographic names are difficult to register as trade marks because it is likely that other traders will want to include the name in their business name or trade mark.  Other tax accountants working in Melbourne may also  want to include “Melbourne” in their business names.

Use of one’s own name

The trickier part of this defence to trade mark infringement is the use of the person’s own name or that of their predecessor in business.  There have been a number of court judgments about how this defence applies.

Most of the cases involved use of company names.  Using the exact company name is protected, for example “XYZ Pty Ltd”.  Courts have also held that the defence applies even if a company omits the corporate details of its company name (“Pty Ltd”, “Limited” etc), but not anything else.  So Roy Weston Nominees Pty Ltd could have defended a claim of trade mark infringement if it had used “Roy Weston Nominees” in good faith, but not “Roy Weston” or “Roy Weston Real Estate”.

Individuals can rely on this defence if they use their legal name (on their birth certificate).  The defence also applies if they use a name that they are usually known by.  Thus, the performer Katy Perry, whose real name is Katheryn Hudson, was able to rely on the “own name defence” when using her stage name, “Katy Perry”, on merchandise.  (The Full Court held that she did not infringe for other reasons.) 

A limitation of the defence is that it only protects the person whose name it is, not others who may use the name under licence.  Therefore, the defence would not protect use of the Katy Perry mark by her merchandising company, Bravado, because its name was not Katy Perry.

Good faith

To satisfy each of the place name and own name defences, the use by the alleged infringer must be “in good faith”.  In a case where Flexopack S.A. Plastics Industry sued Flexopack Australia Pty Ltd, the Court held that Flexopack Australia’s use was not in good faith.  The Judge did not believe Flexopack Australia’s director when he claimed that he did not know of Flexopack S.A.  Intentionally copying a trade mark to gain a marketing advantage usually shows a lack of good faith.

But even if the director was ignorant of Flexopack S.A., he failed to conduct a search of the Trade Marks Register and a Google search, each of which would have revealed that Flexopack S.A. was operating in the same field in Australia.  The Judge held that this failure meant the director was not acting in good faith when he adopted the name Flexopack Australia.

Importance of searches

The Flexopack case emphasises the importance of conducting thorough searches, including of the Trade Marks Register, before starting to use a new name or trade mark.  Searches are designed to avoid infringing someone else’s name or mark. 

Receiving a cease and desist letter from the owner of a similar trade mark, perhaps years later, can cause serious disruption to a business – having to rebrand, pay legal costs and even, perhaps, pay compensation to the trade mark owner.  See my blog about cease and desist letters here.  In addition, if adequate searches were not originally conducted, this limits the options for defending a trade mark infringement claim, as happened in the Flexopack case. 

I can arrange for searches of new names and marks that cover both the Trade Marks Register and other databases.  I have also 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, 2026