Commonwealth agencies face significant challenges in protecting their brand. We explore why copyright enforcement, rather than traditional trademark or consumer law actions, may offer a more effective strategy.
Actions for TM infringement rely on Crown branding being registered as TM. However, many materials of Crown branding (such as Crown images and some Agency logos) are not registered trade marks.
Commonwealth agencies (‘Agencies’) have many materials that could be considered as their ‘brand’. This includes their Agency logo and images relating to their services (e.g. the Centrelink logo, the Veterans Card, the NDIS logo). In this article, we will refer to these various branding materials as ‘Crown branding’.
While the use of the Commonwealth Coat of Arms and other Crown branding is governed by the Australian Consumer Law (ACL), found in schedule 2 of the Competition and Consumer Act 2010, the Trade Marks Act 1995, and the Criminal Code Act 1995, these have not prevented unauthorised use of Crown branding by third parties. For example, many NDIS service providers include the NDIS logo on their websites. Companies offering benefits to veterans often include an image of the Veterans Card logo on their advertising materials. A cursory search through the internet will show how much Crown branding is used by other entities, most likely without explicit permission or authority from the relevant Agency.
This unauthorised use of Crown branding can give rise to the inaccurate perception that these goods or services providers are either somehow connected to the relevant Agency or are endorsed by the Agency. Even in cases where such association or endorsement is not implied, the unauthorised use of Crown branding by an unscrupulous or even illegitimate provider can result in reputational harm to the Agency or the Crown through a perceived association with illegitimate or poor-quality goods or services.
When an Agency is alerted to such unauthorised use, they may, and reasonably so, immediately consider pursuing remedies available under the Trade Marks Act 1995, the ACL, and torts, i.e. remedies for trade mark (‘TM’) infringement, misleading and deceptive conduct, or passing off.
This unauthorised use of Crown branding can give rise to the inaccurate perception that these goods or services providers are either somehow connected to the relevant Agency or are endorsed by the Agency.
Trade marks require registration
Actions for TM infringement rely on Crown branding being registered as TM. However, many materials of Crown branding (such as Crown images and some Agency logos) are not registered trade marks.
Even where Crown branding is registered and TM infringement could be proven, the unauthorised use may be protected by a ‘good faith defence’ to TM infringement in section 122 of the Trade Marks Act 1995. For example, there may be a defence that the Crown TM was used merely to indicate the ‘characteristic’ of the goods or services being related to benefits available from the Agency.
Consumer law and tort of passing off are challenging to enforce
In addition to TM infringement, and particularly where Crown branding is not registered, the Agency could pursue actions under the ACL and torts. However, these actions can be challenging to pursue.
An action for misleading and deceptive conduct under Section 18 of the ACL would require that the unauthorised use must be misleading or deceptive, or likely to mislead or deceive, consumers on the value, price, or quality (for example) of goods or services. Similarly, in actions for the tort of passing off, the Agency must establish that the unauthorised user must have made a misrepresentation that leads or is likely to lead the public to believe that their goods or services are those of the Agency.
As described above, services and goods providers often use Crown branding to indicate to consumers that the purchase of their goods or services may entitle the consumer to certain Agency benefits. In these cases, the Crown branding is unlikely to deceive consumers that the goods and services are provided by the Agency itself.
Logos and most (if not all) Crown branding could be considered as artistic works protected by copyright. Therefore, their unauthorised use could constitute copyright infringement.
Copyright protects brands, too
In trying to stop the unauthorised use of Crown branding, Agencies may be overlooking a more practical and powerful alternative: actions for copyright infringement. Logos and most (if not all) Crown branding could be considered as artistic works protected by copyright. Therefore, their unauthorised use could constitute copyright infringement.
Note that copyright infringement does not require the exact reproduction of the Crown branding and only requires that a ‘substantive part’ is copied.
The power of copyright enforcement was recently highlighted in a case decided by the Federal Court (FCA) in December 2024 against Aldi Foods. Aldi’s previous slogan ‘Like Brands, Only Cheaper’ neatly captured its business model of offering cheaper products that are packaged similarly to more expensive, better-known brands. Despite the overtly ‘like branding’, Aldi has been quite successful in defending claims of passing off, misleading or deceptive conduct, and TM infringement.
It was a potentially seminal victory for all brand owners when the FCA decided Aldi had infringed the copyright in the packaging of Bellies ‘Puffs’ snack range. Interestingly, following the example of a case decided against Aldi in the UK, the Puffs owners did not include any claims of TM infringement, passing off, or misleading or deceptive conduct, and limited their claims to copyright infringement.
While the Aldi decision hinged on the particular facts of that case, it illustrates that copyright enforcement could be a practical and successful alternative to TM, consumer, and tort law actions.
Rethinking brand enforcement strategies
We strongly encourage Agencies to include copyright enforcement as a priority in their strategy for stopping unauthorised use of Crown branding. Contact Proximity to learn more about how your organisation could leverage copyright enforcement to protect your brand.
Include copyright enforcement in your strategy for stopping unauthorised use of your agency’s logo or other branding. Consult Proximity for more advice on copyright enforcement.
The power of copyright enforcement was recently highlighted in a case decided by the Federal Court in December 2024 against Aldi Foods.
1. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625
2. It is unlikely that exceptions to copyright infringement provided in the Copyright Act or the defence of fair dealing would apply to most unauthorised uses of Crown branding.
3. Hampden Holdings I.P. Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452
4. Islestarr Holdings Ltd v Aldi Stores Ltd [2019] EWHC 1473 (Ch)
