If IP Australia refused your trade mark application due to a conflict with another trade mark, it might still be possible to achieve registration. Even where you may not have used the trade mark before, there are alternate options for addressing trade mark conflicts. To minimise the expense involved in obtaining registration, we describe below some common ways you can overcome objections.
Amending the Goods/Services Specification
If IP Australia rejected your trade mark in relation to only some of the claimed goods or services, it may be possible to remove the conflicting items or otherwise amend the claims such that there is no conflict. For example, if you make computer games and have claimed “computer software”, you may be able to sidestep a conflict with another trade mark claiming “computer software for bookkeeping” by amending yours to “computer game software”.
Evidence of Use
If you have used your trade mark before the filing date of the conflicting trade mark, it may be possible to overcome the conflict by providing evidence of this use to the trade marks examiner. This evidence needs to be provided in the form of a declaration and show the trade mark used in relation to all the goods/services claimed.
If the trade mark was not used before the filing date of the conflicting trade mark, it might still be possible to obtain registration if the mark had been used for a significant period since. The length of time that the trade mark needs to have been in use will vary depending on the duration of time the conflicting mark has been registered, and the extent to which it has been used.
A trade mark may also be registered if consent to use and registration of the mark is obtained from the owner of the conflicting mark. In many circumstances, it may be better to request permission instead of attempting to overcome the problem with evidence, particularly if the evidence will be more costly to prepare and/or unlikely to be successful. Applicants should bear in mind, however, that this will alert the owner of the earlier trade mark to the new mark if they were not already aware. The previous owner may also require some payment be made to provide consent, usually to cover the legal expenses incurred. Furthermore, a request for consent to use and registration of a conflicting trade mark is more likely to be successful if there is the threat of opposition or non-use proceedings.
Removing the Conflict
If the conflicting trade mark has been registered for five years, but not used for three years, it may be possible to have it removed. As noted above, the threat of removal due to non-use may persuade the owner of an earlier conflicting trade mark to provide consent. It is important to remember that non-use proceedings should be initiated within one month of the initial request for consent if the request is not granted.
Typically, it is prudent first to seek consent from the owner of the earlier trade mark before submitting your application for removal due to non-use. If the conflicting mark has not yet been registered, it may be possible to oppose registration, provided there are grounds to do so. Similarly, the threat of opposition proceedings may persuade the owner of the conflicting mark to provide consent.
If the conflicting trade mark has not been accepted and is unlikely to be accepted, it may be worthwhile waiting until it lapses and responding to the examiner requesting a re-examination. In this case, applicants should consider deferment of their application to allow as much time as possible to respond to the adverse report.
If your trade mark has been rejected and you need assistance, let our trade mark lawyers know your questions on 1300 544 755.
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