Trade Mark Infringement or Fair Use of a trade mark?

Intellectual Property (IP) is an exclusive right held by the registered owner for his/her invention/creation under the relevant acts defined in Australian Law. Australian business is becoming more aware about IP Rights which helps them to secure protection for their inventions and creations. Increasingly, businesses are taking action to stop third parties from copying their Intellectual Property and trading off their goodwill. 

The case of  AGL Energy Limited V Greenpeace Australia Pacific Limited [2021] FCA 625; 395 ALR 275; 159 IPR 336 provides an understanding on Trade Mark Infringement. 

BACKGROUND TO THE CASE 

The case concerned the by Greenpeace on dated 5 May 2021 of AGL’s Logo. They used AGL’s Logo across social media platforms with tweaked taglines such as “Still Australia’s Biggest Climate Polluter” and “Generating Pollution For Generations”. Greenpeace argued that the use of AGL’s Logo did not amount to trade mark infringement because they were not using the logo as a trade mark ( i.e. to identify the source of  goods and services). Eventually, the court agreed with these arguments. 

ARGUMENTS SUBMITTED BY GREENPEACE

Greenpeace argued their use of AGL’s logo could not be considered an infringement because they were not using the mark to identify their goods or services. Instead, they were ‘critiquing’ the business that held the mark. In other words, their usage of AGL’s logo was not intended to be accredited as a source identifier of AGL’s goods and services. Moreover, the modified logo fell within the exception of “fair dealing” is a copyrighted work as it was used for purposes of “parody or satire” or “criticism or review.”

ARGUMENTS SUBMITTED BY AGL

AGL stated it did not want to prevent Greenpeace from speaking or engaging in public debate around the issue. However, it sought to prevent usage of its modified logo in Greenpeace campaign materials. AGL argued that such usage amounts to trademark and copyright infringement since the original logo is a registered trademark and an artistic work under copyright law. It also argued that its registration, among other things, also covers educational services pertaining to the environment; therefore, Greenpeace cannot use the logo concerning the environment.

POINTS TO BE REMEMBER WHILE APPLYING FOR A TRADE MARK 

• This case highlights various points in Australian Trade Mark law and also fundamentally reinforces the importance of correctly preparing a trade mark application including the correct specification. 
• For example, if you have a registered trade mark for your business name or logo, it should be registered in relation to the goods and services you offer as part of your business. If 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 registered trade mark you can take appropriate action.
• In addition, an inaccurate list of goods and services leaves you potentially vulnerable to a third party using the mark concerning goods and services not covered by your application. It risks allowing a third party to file an application for an identical or similar mark for those goods and services not covered, effectively blocking you from seeking your own protection for those goods and services.

THE COURT ANALYSIS AND JUDGEMENT 

The Australian Federal Court stated that trade mark could be infringed only if it is used in relation to the goods and services covered by such trademark registration. Accordingly, Greenpeace did not use AGL’ logo in relation to the claimed goods and services covered in AGL’s trademark registration. Using a corporate logo for environmental activism or to protest against climate change is reasonably permissible under both trademark and copyright law if that use constitutes a “fair dealing” for the true purpose of criticism or “parody or satire. The Court further stated that the use of corporate logos for criticism or review will not automatically fall under the exception of fair dealing, and due consideration has to be given to intended use on a case-to-case basis.

As per the Federal Court’s view, looking at Greenpeace’s posters and banner advertisements, consumers would not see them as advertisements or promotion of AGL’s goods and services.  Greenpeace used the AGL’s logo to criticise AGL’s products by providing factual information to the Australian consumers on the negative environmental impact in Australia. Under no circumstances would consumers think that Greenpeace was promoting or offering any goods or services of their own by referencing the AGL’s logo.

With respect to Greenpeace usage of modified logo that constituted “parody” or “satire” for the purposes of statutory “fair dealing”, the Court relied on the cases Pokémon Company International, Inc. v Redbubble Ltd, [2017] and Network Ten Pty Ltd v TCN Channel Nine Pty Ltd and Ors, [2004] and held that “the use of an artistic work for the purpose of parody or satire may be one where the impugned work is used ‘to expose, denounce or deride vice’, often in the context of a humorous or ridiculous juxtaposition.”

The Court held that there was no copyright infringement and further noted as follows:

1. Irony, sarcasm, or ridicule are an inherent part of parody and satire, and solely because such work results in damage to the copyright owner do not mean that work can be tagged as “unfair.”  Notwithstanding the evidence that Greenpeace’s internal documents indicated its intention to declare AGL brand as “toxic”, the Court considered it as “colourful language, perhaps rhetorical hype of a type typically used in advertising and also environmental campaigning…that would assist Greenpeace in criticising AGL’s conduct and provoking debate.”  
2. The nature of the work is the entire corporate logo; Greenpeace using the whole logo (work) without transforming it does not make the use “unfair.” 
3. Even though AGL’s significant reputation is tied to its logo, unlike trademark, copyright only protects the artistic expression of the logo and not the brand reputation. The harm done to AGL is not because its logo was used but because of the content of the advertisement campaign.
4. Each advertisement indicated that Greenpeace is the source of such a campaign, and no reasonable, sensible person would see it otherwise.
5. Realistically, it seems implausible that Greenpeace would have gotten permission to use work by AGL. 
6. Greenpeace is a non-profit organisation and not a competitor of AGL.

In relation to AGL’s trademark registration for educational services, among other things, the Court held that: “[I]t is apparent that not every communication of information will amount to ‘education’. Nor does the provision of information about particular topics in the context of a media campaign naturally amount to the provision of ‘education services’ or ‘information and consultancy services’ relating to these things. None of the elements concerning the systematic imparting of instruction or the presence of a curriculum that one might expect to accompany the provision of education services and to fall within the definition of the provision of education services are present. Nor…what is offered by Greenpeace in the context of the impugned conduct should be understood to be in relation to ‘scientific and technological services’ or ‘industrial and research services’ …not satisfied that Greenpeace is using the trademark… in relation to such services.”

Therefore, the Australian Federal Court dismissed the claim for trade mark infringement. 

CONCLUSION

It is important for any business to note that using a corporate logo in informational material directly works as a source of revenue generation and to generate goodwill and brand value for corporations. Such use without permission is copyright infringement unless it squarely falls within the scope of the exceptions, which is decided on a case-to-case basis.

In view of AGL Energy Limited v Greenpeace Australian Pacific Limited, we observed that not all the materials fell within the exception of fair dealing because the intended use did not reflect that. Notwithstanding anything contained to the contrary, copyright and trade marks will always remain an effective tool to protect and restore brand value and reputation.

In an instance where advertising is deceptive or gives misleading and factually incorrect information a brand owner may be able to claim trademark and/or copyright infringement. AGL did not argue this.

If you want to secure the benefits provided by intellectual property including trade marks and copyright reach out to our team at IP Guardian.

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Barry Meskin

Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.