Every so often I am asked a question such as: “I have a granted design/patent/trade mark registration in respect of my brand/product/process. Does this mean that I can use that brand/product/process without fear of infringing anyone else’s Intellectual Property Rights?”.
The answer to this question is typically “No”, but the situation can be complex and it really depends on if we are dealing with a granted design, patent or trade mark, as outlined further below.
For Australian trade marks, use of a registered trade mark does provide a defence against infringement of other registered trade marks. This defence is provided by section 122(1)(e) of the Australian Trade Marks Act, which provides: “a person does not infringe a registered trade mark when the person exercises a right to use a trade mark given to the person under this Act”. However, use of a registered trade mark can still give rise to a common law action such as the tort of passing off or breach of Australian Consumer Law (see section 230 of the Trade Marks Act). Use of a registered trade mark could also still result in infringement of other forms of Intellectual Property, such as copyright.
For Australian patents, sale or use of a product or process falling within the scope of a granted Australian patent provides no defence against infringement of another Australian patent. This is because a granted patent provides its owner with the exclusive right to exploit (e.g. sell, import, etc.) the patented product or process (section 13 of the Patents Act). In other words, a granted patent provides its owner with the right to prevent others from exploiting a patented product or process, rather than a right to use the patented product or process. It is possible to have two patents granted to two different owners, and neither patent owner is able to use their invention without infringing the other owner’s patent rights. Likewise, it is possible for a certified design to be infringed (for example) through use of a patented product or process.
For Australian designs, if the design is certified (which occurs following examination) the owner of the design has the exclusive right to perform various actions including importing, selling and using a product covered by the design (section 10 of the Designs Act). Similar to patents, a certified design provides its owner with the right to prevent others from performing certain actions in relation to the product, rather than a right to use that product. It is possible for a patent to be infringed by sale of a product covered by a certified design.
Please note that the above comments are of a general nature and are not to be interpreted as constituting legal advice.
If you have any questions in relation to intellectual property protection or infringement, please contact me at douglas.horton@spruson.com.