Every business has handled a photo, a template, or a stock image that accidentally features someone else's logo or brand name. Often it is harmless. But when that picture is used as part of advertising or promotion, the question of whether you can lawfully use it turns on trade mark law, and getting the answer wrong can expose your business to an infringement claim.
The good news is that the law does not give a trade mark owner an absolute veto over any picture that shows their mark. The owner has a bundle of rights, and those rights only bite in specific circumstances. In other situations the law lets you use the mark, provided you do so in good faith and for a legitimate purpose. This article walks through how that system works: who holds the rights, what actually counts as infringement, where the exceptions sit, and what a court weighs if a dispute ever reaches it.
Who holds the rights
Three sets of people have a hand in this area of law.
The registered owner
When a trade mark is registered under the Trade Marks Act 1995 (Cth), the owner holds the exclusive rights under s 20 of the Act. Relevantly, this means the owner alone may use the mark, and may authorise others to use it. An important limit is built into that grant: the owner's exclusive rights apply only in relation to the goods or services for which the mark is actually registered. A mark registered for clothing, for example, gives the owner no exclusive right to control use of the same sign for an unrelated line of business, subject to the special protection given to well-known marks that we come to shortly.
Your business
If you want to use a picture that contains a mark you do not own, you are the party who must check that the use does not amount to infringement, or that it falls within one of the statutory exceptions. The practical takeaway is that permission from the owner is the safest route, but it is not the only lawful route.
IP Australia and the courts
IP Australia maintains the Register of Trade Marks and processes registrations. Its public trade mark search lets you look up a mark and see who owns it, so it is the natural place to start if you want to find the owner and ask for permission, or simply to check whether the picture you want to use shows something that is registered at all. If a dispute over infringement does arise, it is a court that decides whether your conduct crossed the line.
When your picture becomes an infringement
Trade mark infringement is defined in s 120 of the Act. It operates on a series of cumulative triggers, and understanding them is where most of the practical value lies.
Use as a trade mark
The first requirement is that you "use as a trade mark" a sign that is substantially identical with, or deceptively similar to, the registered mark. This matters more than it might appear. A trade mark is used as a trade mark when it indicates a connection between the goods or services you are offering and the origin of those goods. Where a picture merely shows a mark in passing, as a genuine scene rather than as a badge of origin for your own product, it may not be trade mark use at all. A stock photo of a city street that happens to show a shop sign, used to illustrate an unrelated article, is unlikely to be caught. The harder cases arise when you deliberately place the mark in a way that suggests a connection, sponsorship, or endorsement.
Substantially identical or deceptively similar
The sign you use must match or closely resemble the registered mark. "Deceptively similar" is broader than an exact match: a sign is deceptively similar if it is likely to cause confusion or deceive a reasonable person, bearing in mind the impression the mark makes as a whole. You do not need to copy the logo perfectly to infringe.
In relation to the registered goods or services
Section 120 distinguishes between different situations. Under s 120(1), you infringe if the use is in relation to the exact goods or services for which the mark is registered. Section 120(2) extends this to goods of the same description, or services closely related to the registered goods, but with the important escape that you do not infringe if your use is not likely to deceive or cause confusion. Finally, s 120(3) protects marks that are well known in Australia even against use on unrelated goods or services, provided the use is likely to suggest a connection with the owner and to hurt the owner's interests.
This is why simply owning a registered mark does not give the owner a monopoly over the sign in every context. The rights are anchored to the classes of goods and services covered by the registration and, for marks that are not well known, they do not extend far beyond those classes.
When you can use the mark without permission
Section 122 of the Act sets out the situations in which a person does not infringe a registered trade mark despite the general rule in s 120. Most of these exceptions share a common thread: the use must be in good faith. This is the qualification the courts focus on, and it is worth understanding before relying on any of the exceptions.
Good faith is assessed objectively. A court looks at your actual conduct, not what you privately believed, and asks whether your use was honest, was not designed to deceive consumers, and did not take advantage of the reputation that the registered mark has built up. An exception that you invoke in good faith shields you; an exceptional-seeming use adopted with the aim of trading on someone else's brand will not.
Your own name or business name
Under s 122(1)(a), you may use in good faith your own name, or the name of your place of business. If a registered mark happens to contain your family name or your business name, and the picture featuring it is used honestly, this exception can apply. A person named McDonald, for instance, can trade under that name, but could not use it in a way calculated to pass their business off as the well-known fast food chain. The honesty of the use is the decisive question.
Descriptions of your own goods or services
Section 122(1)(b) lets you use a sign in good faith to indicate the kind, quality, quantity, value, geographical origin, or some other characteristic of your goods or services, or the time of production or performance. Trade marks are often made up of words that can also function as ordinary descriptions. Using such a word descriptively is not infringement. The difficulty is that the same word can be both a mark and a description, and how it functions in your particular use decides which side of the line it falls on.
Spare parts and accessories
Section 122(1)(c) permits use of a trade mark in good faith to indicate the intended purpose of your goods, in particular where they are accessories or spare parts. This is the exception that allows a phone case maker to say their product is "compatible with iPhone", or a parts supplier to describe the vehicle their component fits. The point of the exception is honesty: the consumer must be told that the accessory is separate and not made or endorsed by the trade mark owner. As soon as your labelling suggests the accessory is the genuine article, or creates a misleading impression of a connection, the exception stops protecting you.
Comparative advertising
Section 122(1)(d) allows use of a registered trade mark for the purposes of comparative advertising. You may legitimately name a competitor and compare your product against theirs, and a trade mark is often the clearest way to do that. But comparative advertising carries its own obligations. It must not be misleading or deceptive. Under s 18 of the Australian Consumer Law, which is Schedule 2 to the Competition and Consumer Act 2010 (Cth), a business must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. A comparison that is unfair, inaccurate, or denigrating can therefore land you in trouble even where the trade mark exception technically applies. The trade mark law may let you name the competitor; consumer law may still punish you for saying something untrue about them.
Where businesses usually go wrong
The most common mistake is assuming that because a mark is present in a picture, using it is automatically infringement. Usually the opposite error causes the real damage: ignoring the need for permission on the assumption that the picture is "fine". A few traps recur.
First, businesses over-refile on the incidental photo. Showing a genuine scene is usually safe, but the same image used as a marketing backdrop alongside your own logo can start to function as trade mark use, dragging it into s 120. Context and framing convert a harmless image into an infringing one.
Second, the descriptive and spare parts exceptions are narrower than they look because of the good faith requirement and the risk of confusion. Describing a phone case as "iPhone compatible" is fine; printing "iPhone" on the case in a way that suggests the case is an Apple product is not. The dividing line is whether consumers are deceived about the origin of the goods.
Third, comparative advertising is risky when it strays into misrepresentation. You may compare products, but an advertising campaign that denigrates a competitor or misleads the public invites a consumer law claim, and the trade mark exception does not protect you against that.
Fourth, businesses forget that the territorial and class limits of a registration can work against them in a good way. If you are using a picture in connection with goods that are unrelated to the registered classes, and the mark is not well known in Australia, you may be outside s 120(1) altogether. This is a point worth checking rather than assuming, because getting it wrong either way can be expensive.
When a lawyer helps
Because so much of this area turns on factual assessments, the point at which professional advice is most valuable is early, before you commit to an advertising campaign or a product range. A trade mark lawyer can run a proper clearance check of the picture against the Register, confirm which classes and goods are relevant, and assess whether a proposed use falls within s 120 or can be brought within an exception such as s 122(1)(c) or (d).
Where you want to use a mark in a commercially significant way, the structured response is to obtain a licence from the owner, or at least a written authorisation, so that you do not need to rely on an exception at all. A lawyer can negotiate that licence, define its scope in the classes it covers, and set out the terms of use. Where you are on the other side, and believe your own mark is being used in pictures without authorisation, a lawyer can assess whether the use amounts to infringement, weigh any exception, and advise on the options for enforcement before any claim is issued.
Where the risk concentrates
The single decision that most often determines whether a picture of someone else's mark becomes a legal problem is whether you have obtained permission or are relying on an exception. Permission removes the uncertainty entirely, and a straightforward one-off use can be licensed more cheaply than most business owners expect, which makes a quick clearance conversation worthwhile before you scale an advertising spend. If you are relying on one of the good faith exceptions, the cost is not the initial use but the risk of a later dispute in which a court, looking at your conduct objectively, decides your use was not honest after all. Getting the assessment done before you publish, rather than after a demand letter arrives, is where the leverage sits.