The Problem

I recently defended a client’s trade marks from being undermined by a proposed new trade mark. The new mark had to be opposed.

The proposed mark was lodged by a private company, not related to my Government Trading Corporation client.

My client has been trading for decades. It has both registered and unregistered trade marks. its marks use its initials as an acronym for how it is known, both locally and internationally, in the marketplace.

The application by a private entity, at its simplest, merely added some common words (a “tagline”) and a number to our client’s marketplace name.

Those words and the number lacked distinctiveness.

However, for some reason, IP Australia did not query the private application and accepted it into the registration process . It was advertised.

Advertising the new application triggered the need for my client to commence formal Opposition proceedings under the Trade Marks Act 1995.

How we dealt with it

Opposition required preparation of a detailed history of our client’s history of use of both its registered and unregistered trade marks.

We also had to address how the private application was in breach of our client’s registered and unregistered trade marks.

We pointed out the potential for the marketplace to be misled or confused, if the application was to succeed. The market could have been led to believe that the private operation was out cient or had a relevant business affiliation with our client.

Our submissions were lengthy, detailed but to the point. Submissions referred to some relevant Court decisions.

Thankully, once the submissions were served on the applicant, it saw the light. the applicant chose to concede before putting to my client and itself to the potentially significant cost and expense of proceeding to a full hearing which would involve producing evidence of my client’s operations, some of which date back to the 1800s.

Summary

In short, in the event of an issue about trademarks: –
1 check the facts;
2 list the facts to do with use; and
3 be aware of how another mark can undermine an existing trademark owner’s rights and be prepared to say so – firmly.