When contemplating registering a Trade Mark, it is important to take into account how registerable the Trade Mark is and the likelihood of the mark being opposed.
Before applying for a Trade Mark, searches of the Trade Mark database should be conducted to determine what Trade Marks are in use and how close they are to your Trade Mark. A risk estimate of the likelihood of an opposition action should then be undertaken.
Opposition of a Trade Mark
Anyone can oppose the registration of a Trade Mark once an application to register a Trade Mark has been advertised as accepted in the Australian Official Journal of Trade Marks. An intention to oppose registration must be filed within 2 months of the Trade Mark being advertised. An opposition to a Trade Mark can only be commenced on the grounds provided for by the Trade Marks Act 1995. Predominantly Trade Marks are opposed on grounds that:
- The applicant is not the owner of the Trade Mark or,
- The Trade Mark is identical or similar to an existing Trade Mark or,
- The Trade Mark is likely to deceive someone that it is another trader’s Trade Mark; or
- Someone will be confuse the applicant’s Trade Mark with another trader’s Trade Mark; or
- The application was made in bad faith.
An opposition to registration is commenced by filing a notice of intention to oppose along with a statement of grounds and particulars.
Examples of Trade Mark Opposition Decisions
In the financial year July 2014 to June 2015, 123 Trade Mark opposition decisions were handed down.
A summary of the following 12 decisions provides the reader with an indication of the types of opposition actions and their outcomes.
- Opposition by Facebook, Inc. to registration of trade mark application “FRIENDBOOK” filed in the name of Northsword Pty Ltd.
Grounds of opposition were established for all services, the applicant’s trade mark was likely to deceive or cause confusion.
- Opposition by Facebook, Inc to protection of International Registration Designating Australia for the trade Mark “facemba”- filed in the name of FACEMBA, LDA.
Grounds for opposition
• Contrary to law (Section 42(b))
• Prior substantially identical or deceptively similar trade mark (Section 44)
• The international registration designating Australia (“IRDA”) was made in bad faith (Section 62A)
• Reputation (Section 60)The Hearings Officer decided that:
• The Opponent had used its FACEBOOK trade marks in Australia and globally on its internet platform for social networking for well over five years before the Holder’s priority date. The Opponent is arguably the worldwide leader in online networking services.
• The trade mark FACEBOOK used by the Opponent had acquired a reputation in Australia in respect of social networking and other Internet platform services.
• FACEBOOK services had their origins in the area of university students. Consumers would naturally assume that the Opponent might create a social network or offer other services directed to MBA students or graduates and the Opponent had established this ground of opposition for the services claimed by the Holder.
- Opposition by PUMA SE to registration of trade mark application, PAN with wildcat head filed in the name of Bangkok Rubber Public Company Limited.No ground of opposition were established.Read More
- Opposition by SAVE MY BACON LTD to registration of trade mark application for “SAVE MY BACON” filed in the name of MARKETING INTELLIGENCE LTD.The Trade Mark was refused registration on the grounds that the application was made in bad faith.Read More
- Opposition by Australian Rugby League Commission Limited of Rugby League Central to registration of trade mark application for “THE MIGHTY MAROONS” – filed in the name of Jane Reid. Opposition to registration was under the Trade Marks Act 1995, notional use of sign closely associated with Opponent, as a trade mark and the Competition and Consumer Act 2010 where disclaimers on Applicant’s website and on Goods were ineffective. Unsurprisingly the registrations of this Trade Mark was refused.Read More
- Oppositions by Cantarella Bros Pty Ltd to registration of Australian trade mark applications Di Bella Coffee … we know coffee and Crop to Cup … we know coffee in the name of Espresso Enterprises Pty Ltd.The oppositions was successful as the applications was considered to be made in bad faith.Read More
- Opposition by Mars Australia Pty Ltd to registration of trade mark application MALTITOS – filed in the name of Delfi Chocolate Manufacturing S.A. The Opponent (Mars Australia) argued that the applicant’s Trade Mark ‘MALTITOS’ was deceptively similar to their well-known Trade Mark ‘MALTESERS’.The opposition was established and the trade mark was refused registration.Read More
- Opposition by Kimberley-Clark Worldwide Inc. to registration of trade mark application KLEENZ Logo – filed in the name of The Reject Shop Ltd.The application was rejected on the grounds that another trade mark had acquired a reputation in Australia; and because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.Read More
- Opposition by CISCO Technology Inc to registration of trade mark application CSIRO Logo and Device – in the name of Commonwealth Scientific and Industrial Research Organisation.A comparison of trade marks found that the trade marks were not deceptively similar, the notoriety of element of the Trade Mark were not established and other grounds for objection were also not established.Read More
- Opposition by Tosca Travelgoods (Aust) Pty Ltd to registration of trade mark application COSMOLITE – filed in the name of Samsonite IP HoldingsThe opposition to registration of the Trade Mark was established under section 58 of the Trade Marks Act (The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.). The opponent was the owner of the Trade Mark via earlier registration.Read More
- Opposition by Target Australia Pty Ltd to registration of trade mark applications – TAR JAY and device – filed in the name of Catchoftheday.com.au Pty Ltd.It was decided that the applicant’s use of trade mark was likely to mislead or deceive and the opposition was established, accordingly the registration of Trade Mark was refused.Read More
- Opposition by Hard Candy Fitness, LLC to registration of trade mark application HARD CANDY – in the name of Hard Candy (Australia) Pty LtdThe registration of a trade mark was refused on the grounds that the application was made in bad faith.Read More
If you are considering registering a Trade Mark or opposing the registration of a Trade Mark, please don’t hesitate to contact us.
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