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Suppose you have come up with a great idea for a trade mark. You attempt to register and find that your application has been rejected, as your idea is too similar to a pre-existing trade mark. Seeking consent to coexist is a potential option for overcoming an objection to your trade mark application because of a pre-existing registration. However, it is a potentially risky approach. Therefore, you should only pursue it once you have a clear picture of your position and any risks associated with approaching the owner of the original trade mark. This article will explain when and how you should request consent.

Should I Seek Consent?

Somebody may object your trade mark because it is too similar to their own. In many cases, you can try to overcome the objection by other means, such as filing submissions, supplying evidence of use or removing a trade mark from the register based on non-use. Another option may be approaching the owner of the trade mark to request consent.

A third party is not obliged to give consent, nor do they need to supply their reasons for not consenting. Furthermore, by seeking consent, you are essentially putting this third party on notice that you are applying for a trade mark that IP Australia thinks is similar to their trade mark. This is why seeking consent can be a risky option if you do not carefully consider your position.

When Should I Seek Consent?

Seeking consent is a good option where you think the owner of the other trade mark is unlikely to have an issue with the coexistence of your trade mark. You should then research the owner of the trade mark. You should make sure that you are well informed of each party’s activities so that you can explain your view as to why you believe the trade marks should be able to coexist. Ultimately, you will be asking them to consent to your trade mark coexisting in the marketplace and on the register with their trade mark.

Before reaching out, make sure you have a clear understanding of your position when seeking consent. For whatever reason, you may be in a stronger position than you thought and may be able to put forward a persuasive argument for them consenting to coexist.

For example, the applicant may not actively use their registered trade mark and may be vulnerable to removal. Therefore, rather than approaching aggressively, seeking consent may result in a more amicable negotiation.

What Is My Position?

It is important to consider the potential ramifications of reaching out to a third party and requesting their consent to coexist. Do some research and determine if the other party is using the trade mark and, if they are, what goods and services the trade mark is used in relation to.

Perhaps you may find that what they do is extremely niche, and they may not consider you to be a direct competitor with your business. You can then explain this view when approaching the owner of the trade mark to demonstrate that you are not a direct competitor. Consequently, this may persuade them to consent to coexist. 

How Will the Other Party Respond?

As previously mentioned, the owner of the original trade mark has no obligation to accept your request. By reaching out to them, you are shining a spotlight on your business and your trade mark. 

Suppose the owner is a direct competitor with an existing and longstanding reputation in an identical trade mark. In that case, you are likely to be in a relatively weak position in terms of attempting to negotiate consent. If you are in this situation, you should be careful reaching out to this business, as they may refuse consent and threaten to take action against your use of the trade mark.

This is the type of worst-case scenario you should consider before reaching out to the owner of an original trade mark. If you are not prepared to navigate the consequences if this situation happens, then the risk may outweigh the likelihood of success. On this basis, you might want to consider other options, like adopting an alternative trade mark.

Key Takeaways

Before seeking consent, do some research and create a clear picture of your position and the other party’s position in this potential negotiation. Some key points that you should also consider before reaching out to the owner of the original trade mark are:

  • is seeking consent to coexist the only option available to you? If you are unsure, you should seek legal advice before committing to a potentially risky approach that may not be necessary; and
  • what is your position in the negotiation? Are you in a strong position, or are you in a weak position? If the answer is the latter, seeking consent may not be worth it.

If you are wondering whether seeking consent to coexist is a good strategy for your business, LegalVision’s intellectual property lawyers can help. Contact them on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

What should I do if the other party refuses consent to coexist?

You may be able to remove their trade mark for non-use, or demonstrate that you have been using your trade mark for longer. However, it may be simpler to select a different, unique trade mark.

What will increase the likelihood of receiving consent to coexist?

If your trade mark is in a different area of the marketplace, or is unlikely to cause confusion, the other party will be more likely to consent. However, they may still refuse consent as the registered owner of the trade mark.


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