NSW Am I Breaching Trademark Laws?

[Sunflower777]

Hi guys,

Recently started an online company selling a service part that is compatible with an existing ventilation system.

I have stated on my website - 'suits Ventis systems' and 'aftermarket Ventis filter' . Ventis is the word in question. It's trademarked and I have received lawyer communication saying I'm breaching the trademark.

Am I? How am I supposed to say what it will fit if I can't mention the word Ventis?

Appreciate any help.

Cheers.

 

[Leonard Mancini]

You can mention the word Ventis. You just need to take particular care not to cross a few fine lines.

1. You should mention somewhere on the page that the "Vents" trade mark is the property of whichever company that owns it. {probably should conduct a search to see if it is registered as I suspect it is and refer to the registration number.

2. You should not incorporate VENTIS in your own trade mark or business name, URL, email or domain UNLESS you fit into a very very narrow set of circumstances.

3. You need to be careful to not "pass yourself off" as VENTIS in your promotional materials or otherwise make representations that you are affiliated or sponsored by them.

Maybe you are already doing all of these things and they are overreaching (its possible).

If you put their letter up here and your website I'd be happy to take a look and offer some suggestions in terms of a reply.

PS - this video I put together a few years back might help explain some of the above -

Cheers

 

[Kim Walters]

Section 122(1) (c) of the Trade Marks Act provides a defence to allegations of trade mark infringement where the person uses the trade mark in good faith to indicate the intended purpose of goods. For example, as in accessories or spare parts.

It specifically states: (1) In spite of section 120, a person does not infringe a trade mark when: ... (c) the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) ...

It has long been recognised that a trader can use a statement such as "suitable for ....", provided this is a genuine description used in good faith to show the intended purpose of the product or service and will not cause confusion.

Further, groundless threats of infringement are actionable in Australia.

 

[Sunflower777]

Thanks so much for your reply Len.

They state about the filter change instructions which I have taken out (I wrote these myself as I know how their system works but I have deleted anyway). I haven't changed any of the text, after reading your reply I will most certainly add in the trademark belongs to Ventis Pty Ltd.

I got quoted $1200 for a lawyer to reply on my behalf, and as this website is for abit of pocket money while travelling I just can't afford that.

Appreciate your help.

Cheers,

You can mention the word Ventis. You just need to take particular care not to cross a few fine lines.

1. You should mention somewhere on the page that the "Vents" trade mark is the property of whichever company that owns it. {probably should conduct a search to see if it is registered as I suspect it is and refer to the registration number.

2. You should not incorporate VENTIS in your own trade mark or business name, URL, email or domain UNLESS you fit into a very very narrow set of circumstances.

3. You need to be careful to not "pass yourself off" as VENTIS in your promotional materials or otherwise make representations that you are affiliated or sponsored by them.

Maybe you are already doing all of these things and they are overreaching (its possible).

If you put their letter up here and your website I'd be happy to take a look and offer some suggestions in terms of a reply.

PS - this video I put together a few years back might help explain some of the above -

Cheers
Len