The Federal Court has confirmed that the “own name” defence to trade mark infringement is available to companies but only for use of their whole name.
A defence commonly relied upon by sole traders, with business names such as “Tessa Scott’s Cupcakes” or “Clare & Jamie’s Plumbing”, and its application to incorporated companies has recently been considered by the Full Court of the Federal Court.
In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd  FCAFC 6, the Court had to consider whether the Anchorage Capital Group L.L.C. (which traded using the words ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL GROUP in Australia) infringed on Anchorage Capital Partners Pty Ltd’s registered trade marks for ANCHORAGE, ANCHORAGE CAPITAL and ANCHORAGE CAPITAL PARTNERS.
Relevantly the Court confirmed that it was a “defence” to trade mark infringement where a company traded under its own name but only for its whole name (in this case “Anchorage Capital Group Pty Ltd”) or the Company’s name omitting “Pty Ltd”, but not the words when used individually.
Cowell Clarke has experience in dealing with both applications for trade marks and trade marks disputes. Please contact Rob Kennett if you would like to discuss this kind of matter or any other trade mark or dispute matter generally.