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A trade mark registration grants you a monopoly over the use of a particular word, logo, slogan, etc., meaning that you are the exclusive user of the trade mark concerning the goods and services claimed. A third party may receive an objection to their own trade mark application because of your earlier existing trade mark registration. In this case, they may seek your consent for your trade marks to coexist in the marketplace and on the Australian trade mark register. In the following article, we will look at the reasons why they may be seeking your consent and what you should consider if you receive correspondence of this nature.

Why Would A Third Party Ask for Consent?

If you have been approached by a third party requesting your consent to allow their trade mark to coexist on the register with your trade mark, it generally means that your trade mark is blocking their application during the examination process. They may have exhausted all other options for trying to overcome the objection and are seeking your consent as a last resort, or they may think you might be open to coexistence. Whatever the reason, generally, you are in a position to decide whether you are comfortable with the proposed coexistence of the two trade marks.

You are not obliged to give consent, nor do you need to supply your reasons for not consenting. However, suppose the letter seems to imply that you are somehow in the wrong. For example, you may not be using the trade mark. In that case, we suggest you seek legal advice to ensure you understand the contents of the letter and the potential ramifications of not providing the requested consent. 

Should I Give Consent?

Do Their Interests Conflict With Yours?

Something to consider when deciding whether to provide consent to coexist is whether or not the third party’s trade mark is substantially identical or deceptively similar to your trade mark. You may think the trade marks are sufficiently different. You may also think that the third party is not a commercial competitor of yours and the risk of consumer confusion is low. Therefore, you might be happy to provide consent. However, before you respond, consider your interests. In particular, consider the potential for consumer confusion or detriment to your existing trade mark.

Are They in the Same Industry?

Suppose the third party is a direct competitor of yours. In that case, you should carefully consider whether the two trade marks can coexist in the same industry without the risk of consumer confusion. This is because by providing consent, you are allowing a competitor to use a trade mark that IP Australia considers to be substantially identical or deceptively similar to your own.

How Similar is the Trade Mark?

Sometimes, IP Australia will reject an application for a trade mark that is not actually that similar to your trade mark. You may look at the third party’s mark and think that it is nothing like your trade mark and consumers will not be confused. This is perfectly acceptable, and providing consent in such cases can be a gesture of good faith between the businesses.

Were You Aware of the Business Before They Requested Consent?

If you were already encountering instances of consumer confusion, you might want to refuse consent for the reasons outlined above, namely the risk of detriment to your business and brand caused by consumer confusion.

Can I Leverage Anything from the Business?

If appropriate, you could negotiate an agreement. This agreement could mean they will provide consent to variations of your trade mark in future. You may also require that they amend their application and limit their goods and services classes to fit more in line with their business. 

We would suggest doing some additional research into their business outside of the information presented in the letter. You may discover that they are operating in another country that you are interested in expanding to. In such cases, it may be prudent to agree with this third party regarding coexistence on a wider scale, including outside of Australia.

How Should I Provide Consent?

Consent should be provided by way of a written agreement, usually in the form of a letter of consent. This essentially outlines the trade marks relevant to the agreement and precisely what you are consenting to. In most cases, the third party will provide an agreement for you to sign. This agreement should outline the relevant trade marks. Make sure you read their agreement diligently, to ensure you understand what you are signing on to.

What If I Do Not Consent?

If you do not provide consent, we recommend keeping an eye on the third party’s application on the register. This is because they may overcome the objection another way so that their trade mark proceeds to acceptance. 

If you consider their trade mark to be too similar to your trade mark, you could then consider opposing their application when it enters the two month opposition period after acceptance. If you do not file an opposition at this time, the mark will eventually proceed to registration. You will lose your opportunity to oppose.

Key Takeaways

Overall, the key thing to remember is that you need to consider your position. You must think about the potential ramifications of consenting to the coexistence of the trade marks. Therefore, if you receive a letter seeking consent, consider the following:

  • are they a direct competitor to your business? If so, is the mark so similar that your customers may confuse the mark with your trade mark?; and
  • can you leverage something from their position, like consent to coexist in another country?

If you do not provide consent, we recommend monitoring their application just in case it proceeds to acceptance so you can oppose it. If you need help regarding a request to coexist, LegalVision’s intellectual property lawyers can help. Contact them on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Should I give consent for a trade mark to coexist?

You should consider several factors before giving consent to coexist. Most important to consider is whether the other trade mark will cause confusion with your own trade mark.

I do not want to give consent for a trade mark to coexist. Do I need to explain why?

You do not need to give an explanation for refusing consent to coexist.

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