Is your Trade Mark sufficiently distinctive?

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Trade mark applications are often faced with the citation of earlier marks as barriers to registration.

In cases where the marks are substantially identical or deceptively similar, and the goods or services are the same or similar, the objection may be overcome by obtaining a letter of consent from the proprietor of the earlier right.

Since the parties involved in a consent situation are generally in a position to gauge market realities and the likelihood, or otherwise, of deception or confusion occurring from the concurrent use of the two marks, the Registrar is likely to consider a letter of consent as persuasive of an applicant’s right to concurrent registration.

Consent will generally be considered persuasive even in those cases where the trade marks are substantially identical, the goods or services are the same and the trade marks are used in the same market – the so-called “triple identity” situation.

The Registrar has the discretion to accept an application on the basis of a letter of consent under the “other circumstances” provisions of s44(3)(b) of the Trade Marks Act 1995.

The applicant’s perspective

When faced with the situation of an earlier mark, an applicant must first consider whether the application can be distinguished on the basis of differences in the marks.

If the marks are substantially identical or deceptively similar, can the application be distinguished in respect of the goods or services for which registration of the mark is being sought?

On the assumption that the goods or services cannot be restricted or amended to avoid the earlier mark, the applicant is faced with approaching the owner of the prior mark for a letter of consent or, if appropriate, attacking the prior right.

In requesting a letter of consent, consideration should also be given as to whether the owner of the prior right should also be requested to limit the scope of its registration to exclude the goods or services of the applicant’s specification.

If the scope is not restricted, the applicant could find itself in a position of having spent considerable time and money in developing a market under its trade mark only to find that the proprietor of the earlier mark, although not in the market at the time the consent was provided, has now entered the market under its own brand. Because such use falls within the scope of protection afforded by the registration, the proprietor of the latter registration is precluded from instituting an action for trade mark infringement.

It should also be appreciated that it is common practice in Australia for the party requesting a letter of consent (and, where appropriate, amendment of the earlier right) to meet the reasonable legal expenses of the party providing the consent.

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