If you come across a business using your registered trade mark, their use of it may be considered infringement. However, one of the main considerations is whether they are using the trade mark in relation to the same or similar goods or services as those covered by your registration. Where the goods or services do not overlap, and there is no risk of consumer confusion between the brands, the trade marks may be able to co-exist.
This article explores how you can determine whether trade marks can co-exist, by identifying the goods or services relevant for each brand.
Classes of Goods and Services
As you may know, when applying for trade mark protection, you must select the relevant class of goods and/or services for your brand. There are 34 classes of goods and 11 classes of services that are recognised by IP Australia. Each class contains items relating to that area of goods or services. For example, cosmetic products fall under class 3, and legal services fall under class 45.
Scope of Trade Mark Protection
Following on from the above, if you have registered trade mark protection, the scope of your trade mark rights will concern the goods or services covered by your registration. Therefore, if another business applies to register the same trade mark for unrelated goods or services, both trade marks may be able to co-exist without any issues. The rationale is that consumers are unlikely to confuse goods and services provided by two businesses in unrelated industries.
Continue reading this article below the formHow to Identify the Goods/Services of Another Business
Where the other party applies for registered trade mark protection, you can view the goods or services they have covered in their application on IP Australia’s trade marks database. You will need to locate the trade mark by searching for the words in the trade mark, owner names, trade mark numbers, or other search options through the advanced search option.
Where the other party does not appear to have applied for registered trade mark protection, it may be possible to determine their goods or services of interest through their website. Using IP Australia’s goods and services search, you can narrow down what classes would be relevant to their business. For example, if the website shows that the business offers dance lessons, searching the word ‘dance’ in the goods and services search will show that ‘dance instruction’ is covered in class 41. You can then use this information to compare with your brand to determine whether there is any overlap. Bear in mind that just because the goods and services of interest to each party fall into different classes does not automatically mean that there is no overlap. There can be similarities between some goods or services even if they fall into different classes. Accordingly, this may mean they cannot co-exist.
Monitoring Use of Your Trade Mark
It is also important to note that if your searches do not identify any overlap in goods and services at this point, we recommend that you frequently monitor these businesses to ensure that they have not expanded into the goods or services covered by your registered trade mark. Using the same example above, if you have a registered trade mark for the word ‘BULLSEYE’ covering clothing in class 25, another business using the same trade mark for fishing equipment may choose to sell clothing in the future, which could potentially infringe on your registered rights.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Key Takeaways
If you have come across a business that is using your registered trade mark, whether trade mark infringement has occurred depends on several factors, including whether the other party’s use of the mark is concerning the same or similar goods or services as those covered by your trade mark registration. Where the goods or services do not overlap, it is possible that both businesses can co-exist in the marketplace and on the trade marks register without issues.
If you would like to discuss how to better protect your trade mark rights, LegalVision’s experienced intellectual property lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Trade mark infringement is where a person or a business is making unauthorised use of your registered trade mark (or a confusingly similar trade mark) in respect of their same or similar goods and services. You may be able to enforce your registered trade mark rights against the other business to compel them to cease using your trade mark.
We would recommend periodically searching IP Australia’s trade mark database for similar trade marks in the same or related classes of goods or services and conducting marketplace searches on the internet.
We appreciate your feedback – your submission has been successfully received.
