VIC Trademark Based on a Copyrighted Work - Opinions?

[JoeA]

Could I get an opinion and comments from a lawyer with qualifications in intellectual property law, please?

Some time ago, I registered a trademark in Australia. It is a “fancy” kind of trademark. (One famous example of a “fancy” kind of trademark is the Instagram logo.)

The design of the trademark I registered was taken from part of an artwork that is not my original work, but part of a copyrighted work of another party, which I did not receive permission to use. At the time of registration, I naively did not consider this could be an issue.

- Does registering a trademark based on another party’s copyrighted work, where there is no permission to use it, make the trademark registration “bad faith” or not “bone fide”?

- Based on the circumstances, is the trademark registration automatically invalid or illegal?

- What are some suggested actions that would be reasonable to take next?

Thank you

 

[Rob Legat - SBPL]

While I'm not an expert in intellectual property, my take is:

- Everything will depend on to what degree you've infringed the other person's copyright. There's no way to tell that definitively without a court ruling. A legal opinion would need a detailed examination of all the relevant circumstances (i.e. you're not going to get that here).

- Your trademark registration isn't affected if it's been through all the checks and notice periods, but you may be subject to challenge by the copyright owner.

- Depending on the extent of infringement, the copyright owner may seek to prevent you from using the trademark or to have to pay some form of royalty for your use of the trademark.

- My suggestions are: (a) get an expert in intellectual property to give you an opinion, which may likely involve a barrister's opinion as well, and/or (b) contact the copyright owner and seek their permission.

 

[EAGLEGATE Lawyers]

I am an IP lawyer and would be happy to help you. Your question should not be answered publicly and without asking you more questions.

You have a relatively complex matter and you need to seek paid advice.

You cannot rectify an invalid mark. Seeking permission after will not cure the problem.