It’s not uncommon for individuals and brands to apply for trademarks that are similar to others, deliberately or incidentally. This is particularly the case in the retail space where the goal may be to leverage an existing brand name but make just enough changes for the trademark to be allowed. However, discovering that a competitor has applied for a trademark or registered a trademark that is similar to another trademark or brand occurs in a range of industries. If you have discovered that someone has trademarked your business name or brand or they have a very similar trademark to your brand, you will want to know how this can happen in the first place, how to oppose a trademark application or cancel a registration, as well as the processes involved.
How Can Others Apply For A Trademark So Similar To Ours?
IP Australia notifies similar trademark owners only if they think an application is deceptively similar. In that instance, they will raise it as an objection to the application and notify you. However, if for some reason IP Australia does not view it as deceptively similar, then they won’t raise it, and you will not be notified.
That is where we find people come to intellectual property and brand protection lawyers like us, seeking advice about how to deal with the issue. Many times businesses discover the competing trademark after the advertised time period. However, that does not mean that it can no longer be contested, as we’ll explore below.
When might you consider opposing a trademark? If you are a registered trademark owner, and another individual or business applies to register a very similar trademark to yours for similar goods and/or services.
Grounds For Opposing The Registration of a Trademark
There are a few key legal grounds in which you can oppose the registration of a trademark. They include that the mark is:
- substantially identical or deceptively similar to another mark or your mark;
- not capable of distinguishing the goods/services;
- likely to deceive consumers or cause confusion in the market;
- you have an earlier use of the same/similar mark;
- similar to another mark which has acquired a reputation in Australia;
- scandalous or contrary to law; and/or
- not intended to be used by the trademark applicant.
If you believe you have legal grounds to oppose the registration of the trademark, the next step is to lodge a notice of intention to oppose the registration of the trademark. If you do nothing and nobody else opposes the trade mark, the mark will proceed to registration.
Challenging A Trademark Application
The ‘opposition to registration’ process is a process that involves yourself or your business, the competitor and IP Australia.
Importantly, if you elect to oppose the trademark application, you have only two months after the mark is first advertised, to lodge your opposition. You will need to file a Notice of Intention to Oppose within that two month window to start the opposition process. Otherwise, unless opposed by another party, the mark will proceed to registration without further difficulties.
You will need to show reason as to why you think the trademark should not be accepted and registered. Using the legal grounds listed above, evidence will need to be provided to support your opposition.
Can We Oppose A Trademark If We Haven’t Got a Registered Trademark Ourselves?
You do not need to have a registered trademark to have legal grounds to oppose someone else’s trademark application. If you have been trading for years and building up a reputation and goodwill in Australia and have discovered that another business has applied to register a very similar trade mark to your brand in relation to similar goods and/or services, you may also have legal grounds to oppose the application.
Can A Trademark Be Challenged After Registration?
Yes. If you have either missed the two month window period to oppose or discovered the competitor’s trademark later and the competitor’s mark is now successfully registered in Australia, you can consider making an application to the Court for an order to cancel the trademark.
This is a more costly exercise than opposing during the advertising period and can take considerable time. If you are not in this position yet, it is a far more desirable option to ensure that your competitors’ trademark applications are being monitored, along with any new players coming into the market.
Be Alert To Competitor Applications
How can a business know when a competitor’s mark has been advertised, and that the clock has started ticking on the timeline to oppose it?
To be alert to new trademarks you need to be reviewing the Government gazette each time it is published to see a list of the trademark applications. Alternatively, you can consistently check IP Australia’s Online Trade Marks Search Database, or do a broad search every month for similar marks applied for in Australia.
For our clients that don’t wish to have to manage the disruption and expense that comes with missing the window of time to oppose, we monitor the IP Australia database for them, and we know exactly what to look for. For a monthly fixed fee, as part of our trademark portfolio service, we advise our clients of any conflicting trademark applications as they arise.
For client trademark oppositions, we develop a strategy which may include either a cease and desist letter and/or enter into commercial negotiations with the other party during the opposition period. We also advise on opposing a third party’s trade mark application and can initiate the opposition process, within the timeframe, on a client’s behalf.
At Level Up Legal, clients come to us for advice, surprised that they weren’t notified of a trademark application they see as similar to theirs. Equally, they come to us for advice and support to lodge an application to the Courts to cancel a registered trademark. If you would like advice on how to oppose a trademark application or cancel a registration, or want to learn more about our trademark monitoring service, reach out to Brigit or Zan for a free, 30 minute no-obligation consultation here.