The short answer
A registered trademark does not give the owner a right to stop every use of a similar sign. The Trademarks Act 2009 protects four groups: use outside the limits of the registration (section 27), a person who used the mark continuously before the owner (section 30), honest use of your own name, place of business or a plain description of your goods (section 31), and words that have become the common name of a thing (section 32).
Section 27: acts that do not infringe
Section 27(1) begins with "notwithstanding anything contained in this Act". It lists acts that are not infringement even though a registered mark is involved.
27(1)(a)
Outside the limits
If the mark was registered subject to conditions or limitations, use in a place, market or circumstance to which the registration does not extend is not infringement.
27(1)(b)
Permitted use
Use within the limit of use permitted by the proprietor or a registered user is not infringement. The clause has exceptions where the proprietor later removed or obliterated the mark, or consented to the use.
27(1)(c)
Accessories and twin marks
Use of a mark on goods made to form part of, or be accessory to, other goods is covered. So is use of one of two identical or nearly similar marks that are both registered.
Section 27(2) deals with resale. If goods or services bearing a registered mark were lawfully acquired, selling or dealing in them is not infringement just because the mark was assigned to someone else after the acquisition.
Clause 27(1)(b) is drafted in dense language. Read the full clause in the Gazette text before relying on it for a specific dispute.
Section 30: saving for vested rights
The Act does not allow the owner of a registered mark, a registered well-known mark or a registered user to stop a person from using an identical or nearly similar mark if that person, or a predecessor, has used it continuously since a date earlier than the owner use.
- The earlier user must have used the mark continuously.
- The use must be in relation to the same goods or services.
- The use must pre-date the first use by the registered proprietor or a predecessor in title.
The second sentence helps the earlier user at the Registry. The Registrar shall not refuse to register the earlier user mark merely because the other mark is already registered.
Section 31: own name and honest description
Nothing in the Act lets the owner of a registered mark or registered well-known mark interfere with the bona fide use by a person of:
- his own name,
- the name of his place of business,
- the name of a predecessor in that business, or
- a bona fide description of the character or quality of his goods or services.
The word to watch is bona fide. A name or description used to ride on the owner reputation, or used in a trademark way, is outside the protection.
Section 32: words that became the name of the thing
Section 32(1) says that a registration does not become invalid only because, after registration, a word in the mark has become the name or description of an article, substance or service. The proviso removes that protection in two cases:
- there is a well-known and established use of the word as the name or description by traders, not connected with the proprietor or a registered user; or
- the product was made under a patent, two years or more have passed since the patent expired, and the word is the only practicable name.
In those cases, a section 51 proceeding treats a mark made only of that word as an entry wrongly remaining in the Register for those goods or services. If the mark has other matter, the deciding authority may keep it on the Register on condition that the owner disclaims exclusive rights in the word.
The four sections at a glance
| Section | Protects | Key test |
|---|---|---|
| 27 | Use outside limits, permitted use, accessories, resale | Fits one of the listed cases |
| 30 | Earlier continuous user | Continuous use from before the owner |
| 31 | Own name, place of business, honest description | Bona fide use |
| 32 | Registration against generic words | Common trade name or expired patent plus only practicable name |
Frequently asked questions
Can the owner of a registered trademark stop an earlier user?
Not if the earlier user has used a similar mark continuously from before the owner, under section 30 of the Trademarks Act 2009.
Can I use my own name as a brand if someone registered it?
Section 31 protects bona fide use of your own name or your place of business name. It does not protect use made in bad faith.
What if my mark became the generic word for the product?
Under section 32, if traders widely use the word as the name of the product, the registration for those goods can be treated as wrongly on the Register, or a disclaimer can be required.
Is reselling genuine goods infringement if the mark was later assigned?
No. Section 27(2) says lawfully acquired goods can be resold even if the mark was assigned after the acquisition.
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