Australia: Trade Mark Watching – Keep time on your side

Intellectual Property Alert: 9 July 2013

Brand owners are often under a common misapprehension that, after registering a trade mark and securing vital rights for their brand, they can rest on their laurels when it comes to monitoring potentially conflicting third party trade mark applications and taking prudent enforcement action. On the contrary; an effective and productive brand protection strategy, like all core business practices, requires ongoing time, effort, adaptation and investment. Putting a trade mark watch service in place once your trade mark is filed or shortly after registration is as important as pre-filing searching and brand clearance.

Recent amendments to Australia's intellectual property regime have focused attention on the importance of proactive brand protection with the introduction of the "Raising the Bar" changes under the Intellectual Property (Raising the Bar) Act 2012 (Cth) and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013. Importantly, the advertising period for new applications, and window for lodging oppositions against conflicting marks, has been reduced by a third, from three months to two months for all new applications filed on or after 15 April 2013.

Partner Hayden Delaney and solicitor Amanda Dominick explain the benefits of trade mark watching; the often-overlooked, highly effective yet inexpensive brand protection tool that keeps time on your side and ensures you are in the best position to strategically police and safeguard your brand. We also discuss how you can take advantage of one of ten free three-month watch trials to give you first-hand experience of how HopgoodGanim's trade mark watch service can lift your brand protection strategy to the next level.

Key points

  • A reliable trade mark watch service, tailored to the underlying brand and specific infringement concerns, is an essential part of any effective brand management and enforcement program.
  • It is up to brand owners to proactively police and enforce their brand – in Australia, brand owners are not automatically notified when a third party files an application for an identical or similar trade mark, so investment in a trade mark watch service is imperative.
  • A recent decision of the Australian Trade Marks Office (ATMO), emphasises the importance of pre-filing trade mark searching and how having a trade mark watch service in place not only ensures you are informed of conflicting marks at the right time but, in a worst case scenario situation, can be the persuasive evidence you need to demonstrate an intention to get to "an informed position" (i.e. a position of knowledge from which you could have decided to oppose an application for a conflicting mark within the advertising period).
  • HopgoodGanim's intellectual property team is pleased to offer a free three-month worldwide watching trial to the first ten clients to apply before 31 July 2013.

Trade Mark Watching

A trade mark watch service works by monitoring new applications to determine whether any are identical or similar to the "watched" trade mark in relevant classes, and then informing you when a potentially conflicting trade mark application is filed and the deadline for commencing opposition action. In this regard, it is crucial to be aware that the ATMO will not directly tell you when third party applications are filed that might conflict with your trade mark. For this reason, trade mark watching is one of the best investments and "insurances" a brand owner can put in place to ensure prompt notification of applications for identical or confusingly similar trade marks. At a time when bad faith trade mark filings are at an all time high, a reliable and accurate watch service is the best and most cost-effective method to preserve your brand equity and prevent against dilution in the jurisdictions that matter to you and your brand.

HopgoodGanim's watch service includes continuous monitoring of new trade mark applications in relevant classes on a "world-wide" basis (in over 200 countries) or within the specific regions, individual countries or filing jurisdictions important to your business. Our intellectual property team does the hard work for you by reviewing your "watch hit-list" and then promptly reports the most concerning new applications to you in emailed watch reports, tailored to meet your business needs. Our watch reports regularly alert you to applications for trade marks that are identical or confusingly similar to yours, and are delivered to you shortly after publication of the application commences. Regular and timely reporting allows you to take action early to safeguard your brand from infringement or dilution, and avoid the often complex, protracted and expensive alternatives to commencing an opposition action during the trade mark advertising period. HopgoodGanim is pleased to offer ten free three-month world-wide trade mark watch service trials.

During the three-month period, we will watch your nominated mark in your core-classes in over 200 countries and provide you with regular watch reports. For further information and to apply for this offer, please email Amanda Dominick by clicking here. Please note you must be an existing HopgoodGanim client to take advantage of this offer; the complimentary three-month watches are limited to ten in total on a first-come basis; only one watch is available per client; and each watch trial must commence before 31 July 2013.

Trade Mark Oppositions

In Australia, all trade mark applications must be advertised for opposition after passing through the initial examination stage and being "accepted" by IP Australia. The purpose of the opposition period is to allow any person, "the opposer", to challenge a trade mark provided the opposer can establish and support one of the permitted grounds. Some of the more common grounds for opposition include similarity to an earlier filed registration or pending application, that deception or confusion is likely because of the reputation of another trade mark in Australia, the applicant not being the true owner of the mark or the mark applied for being contrary to law (i.e. infringement of third party copyright). If the opposer is successful, the opposition will prevent the mark applied for from completing the application process and, therefore, preclude the mark from achieving registration.

The Raising the Bar changes that came into effect on 15 April 2013 reduced the advertising period, and thereby the time during which a notice of opposition can be lodged, from three months to two months. As a double blow, if a potential opposer fails to oppose a mark in the permitted two month period, the Raising the Bar changes have also limited the grounds on which extensions of time can be filed and will be granted.

Requests for extensions of time to file a Notice of Opposition may now only be filed on the basis of an error or omission by, or in circumstances beyond the control of, the potential opposer, their agent, the Trade Marks Registrar or an employee. Consequently, with the smaller opposition filing window and limited grounds available to apply for extensions of time, the onus on brand owners to keep informed is now even greater. It is therefore imperative to maintain strict administrative monitoring processes to ensure that relevant opposition deadlines are known and acted on before it's too late.

Case Study: Bridgestone – Out of time and off the mark

Bridgestone Corporation (Bridgestone) recently missed the mark (the opposition deadline), after being unsuccessful in a decision of the ATMO1 regarding its application for a late extension of time in which to oppose a competitor's earlier filed trade mark application. In July 2012, Bridgestone's competitor, Zylux Distribution Pty Ltd (Zylux), filed an application for the composite representation of TYREMATICS TAKING THE PRESSURE (depicted below) in Class 9 including claims for tyre pressure systems.

Zylux's application for the composite mark passed through the initial examination stage and was then advertised for three months under the pre-Raising the Bar regime from 4 October 2012. Just over a month before the advertising period for Zylux's application commenced, Bridgestone had filed an application for TYREMATICS (plain word) that included a range of conflicting claims in Classes 9 and 42. Evidence presented to the ATMO suggested that Bridgestone had filed its application without conducting pre-filing trade mark searches for TYREMATICS which, had even the simplest of searches been done, would have warned Bridgestone of Zylux's earlier filed application.

Due to a series of unfortunate administrative errors, the adverse examination report for Bridgestone's mark (which included a citation for Zylux's application) was not reviewed or reported for over a month after it was issued. Had Bridgestone's attorneys reviewed the report at the time of issue (or had a watch service in place for TYREMATICS), they would have been put on notice of Zylux's application in late-December 2012 which, incidentally, would have given them time to oppose the application before the end of the advertising period on 4 January 2013. Bridgestone filed an application for late extension of time on the basis of an "error or omission by the person applying for an extension of time, or by that person's agent".

The ATMO Hearing Officer refused to allow the extension of time, affirming policy and precedent that Bridgestone must have held a specific intention to oppose the application during the advertising period (or must have at least demonstrated an intention to get to an "informed position" from which it could decide to oppose – for example, by setting up a trade mark watch service). Additionally, there must have been a causal link between the agent's error and Bridgestone's failure to file the notice of opposition before the deadline. Unfortunately for Bridgestone, they were completely unaware of the Zylux application until well after the advertising period had concluded and, accordingly, the Hearing Officer agreed with general legislative sentiment that it would be an unacceptable situation if "any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention".

The takeaway message from Bridgestone's failure is that, even without specific knowledge of the Zylux application, Bridgestone may have been successful if it had been able to demonstrate that it had taken any of the usual defensive steps (pre-filing searching or trade mark watching) that would have put it in an informed position during the advertising period from which it could have decided to oppose. The Hearing Officer made damning reference to Bridgestone's failure to take "any of the generally accepted actions to investigate or protect the new trade mark of the application filed on 13 September 2012, such as pre-searching the Trade Marks Register, or instigating a watch service in respect of the crucial word TYREMATICS". Bridgestone's predicament should be a warning to all brand owners to think seriously about your brand protection efforts and whether you are in the best "informed position" that you can be.

Footnote

1Bridgestone Corporation v Zylux Distribution Pty Ltd 2013 ATMO 19

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