If you have lodged a trade mark application with IP Australia, you may subsequently receive an adverse examination report (Report) which identifies issues preventing your application from being accepted.
A common issue is where your application has been deemed too similar to a pre-existing application or registration. The examiner will raise a citation under section 44 of the Trade Marks Act 1995 (Cth) (the Act) which you will have 15 months to overcome. In general, the citation may be obviated by:
If you can obtain written consent from the owner of the conflicting trade mark, then you may be able to overcome the section 44 citation.
However, there is usually no requirement (or incentive) for the owner of the conflicting mark to consent.
An examiner will give considerable weight to a letter of consent, assuming it demonstrates that the party giving consent appreciates the impact of doing so.
When filing your trade mark application, you must identify goods and/or services you intend to use the mark in connection with. A conflict with a prior application or registration will generally exist where the marks and similar, and are filed in respect of goods or services of the same description.
In certain circumstances, you can amend your application by removing or reducing the conflicting goods and services, so that the conflict no longer exists.
However, simply removing goods/services from the application will not protect you from a trade mark infringement claim if you actually use the mark in connection with those goods and/or services.
In certain circumstances, it may be appropriate to challenge the prior conflicting application/registration. This might involve identifying a technical issue plaguing the prior mark and applying to have its either amened or removed from the register.
A common solution is to challenge to prior mark on the basis of non-use.
Removal for non-use
Section 92 of the Act empowers a person to make an application to have a trade mark removed from the register on the basis of non-use.
You can request removal of a trade mark if you believe the owner has not used, or never intended to use the trade mark or if the owner has not used the trade mark in good faith.
Grounds for non-use application
The first ground relates to situations where there is a lack of intention in good faith of the applicant for registration to use the trade mark as at the date of application for registration.
Section 92(4)(a) of the Act provides that an application for non-use can be made where an applicant applies for the registration of a trade mark where the owner has no intention in good faith to:
It is necessary to show that the trade mark has not been used any time before one month preceding the non-use application.
The second ground under section 92(4)(b) of the Act is relevant where the existing trade mark has not been used within a three-year period or, if there has been use, it was not in good faith.
On an application for non-use has been filed, the owner of the mark must then respond and provide evidence of use. Failure to do so may result in the trade mark being removed from the register, clearing the way for your application to be accepted.
If you have continuously used your trade mark since before the filing date of the conflicting mark, then you may overcome the citation.
To establish prior use of the mark, you must provide evidence demonstrating that your mark has been used continuously prior to the registered conflicting mark, including evidence:
You may write to the examiner to argue that a citation under section 44 does not arise. This can be in the form of a letter, or a written submission outlining a detailed legal argument.
You may also request a hearing, which provides you with an opportunity to make oral submissions. Often, an applicant will engage a lawyer to appear at the hearing and make submissions on their behalf.
If, after hearing, your application has still not been accepted, you are entitled to refer the matter to the Federal Court of Australia for a hearing de novo.
It is difficult to predict how IP Australia will assess a trade mark application and it is realistic to expect the issue of a Report at first instance. The appropriate method to respond to the Report will depend on the issues identified.
There may be circumstances where the conflict cannot be overcome and you will need to consider whether the use of the mark will now constitute a trade mark infringement with respect to the conflicted registration.
If you receive an adverse examination report, or require general advice in relation to trade marks, please contact Iain Freeman or Andrew Sutton.
