Watch Your Trademarks Like a Hawk
After you’ve registered your trademark, it’s important to monitor both the market and the official trademarks register as your competitors might still try to use, and even register, the same or similar marks.
Trademark Examiners should be watching your trademark for you
As noted in a previous article, there are many advantages to registering your trademark.
One of these advantages is that if a competitor tries to register a ‘substantially identical’ or ‘deceptively similar’ mark in the future, IP Australia is likely to cite your trademark in an ‘Adverse Report’. In effect, the Examiner says to the new applicant: ‘I can’t accept your trademark application because it is too similar to a previous one already registered by XYZ Pty Ltd’.
There are some obvious benefits to this. First, the other party may be prevented from ever registering their trademark. Even better, the other party may simply decide not to use the trademark any more after receiving the Adverse Report. These can happen without you needing to do anything.
If the other party is able to overcome the Examiner’s objections, IP Australia may notify you of this fact (depending upon how the objections have been overcome). This gives you a ‘heads up’ about the existence of the other party, and gives you an opportunity to decide what you want to do about them.
Your trademark won’t always be cited by Examiners to prevent new applications
Does this mean that once you’ve registered your trademark, your interests are being looked after by the Examiner? Well, not entirely.
1. Human error
Examiners are only human, and they might not find your mark when performing their searches perhaps due to genuine mistakes caused by anything from a brief moment of inattention to negligence.
Less commonly, there might be an error in the register which will prevent trademarks from being identified with the correct searches. For example, Trademark No. 904971 was first accepted for registration on 18 September 2003. As at 31 May 2010, the trademark was indexed with the following information on the official register:
WORD: TEQUILLA SLAMMA & LEMON
IMAGE: MAN IN HAT,STRAW SMILING IN RECTANGLE
You’ll see that the word ‘TEQUILA’ was spelt ‘TEQUILLA’ (i.e. with a ‘double L’). This means that anyone searching for trademarks containing the word ‘tequila’ would not find this trademark in the future unless they were very careful in searching for alternate spellings.
2. Human judgment
Assuming the Examiner finds your prior registered trademark, it might not even be cited against the new application. Often these cases are a matter of degree, and there is room for reasonable people to differ. Therefore one person might regard one mark as being ‘substantially identical’ or ‘deceptively similar’ while another may not.
It’s important to note that an Examiner has less of an interest in preventing other traders from registering similar marks than you do, and that you are likely to have a stronger opinion on the subject than the Examiner.
3. Applicant’s argument
Finally, even if the Examiner is of the view that the trademark is deceptively similar, the Applicant is given an opportunity to make submissions on the point. If reasonable arguments are made, the Examiner is usually bound to let the application proceed even where she or he disagrees. This is because of an important Federal Court decision which made it clear that the examination process should not be an adversarial one.
Exercising your right to oppose
Once an Examiner accepts a trademark for registration, it is published in the ‘Australian Official Journal of Trade Marks’. An update to the journal is published each week, and any given update can include the details of hundreds of trademarks that have been accepted for registration.
For the next two months, other people have a right to ‘oppose’ the application before it is actually registered.
In order to file an opposition, the earlier trader needs to be aware that a conflicting trademark has been accepted for registration. This is not an easy task, and it is perhaps a reason why less than 5% of all trademarks are opposed.
In order to protect your registration, it may be worthwhile looking into a commercial ‘trademark watching’ service.