Watch Trademark Registrations Like a Hawk

After you’ve registered your trademark, it’s important to watch out for other traders who might try to register similar marks.

1. Trademark Examiners should be watching your trademark for you

As noted in a previous post, there are many advantages to registering your trademark.

One of these advantages is that if a competitor tries to register a “subtantially identical” or “deceptively similar” mark in the future, IP Australia is likely to cite your trade mark in an “Adverse Report”. In effect, the Examiner says to the new applicant: “I can’t accept your trade mark application because it is too similar to a previous one already registered by XYZ Pty Ltd”.

Having your trademark cited in this way is a major benefit, because someone else is protecting your interests without you having to do anything.

2. 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.

a. 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 trade marks 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 trade mark 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.

b. 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.

c. 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.

3. 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 three 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 worth while looking into a commercial “trademark watching” service.