3. Negotiation with owner/s of conflicting trade mark/s

Date Published

An applicant who is advised of a ground for rejection under section 44 may choose to enter into negotiations with the owner of the conflicting trade mark. Since the potential for negotiation can only be assessed by the applicant, and the Registrar must remain impartial in matters relating to the rights of trade mark owners, this is not a course of action which examiners should propose. The outcome of such negotiations might be one of the following detailed below.

3.1  Amendment of the conflicting application or registration

In order to overcome grounds for rejection under section 44 an applicant may seek to negotiate with the owner of the conflicting trade mark to amend the goods or services of that trade mark. If agreeable, the owner of the conflicting trade mark will apply to amend the specification of goods or services under the provisions of subsection 65(7) of the Act in the case of a pending application, and section 83 in respect of a registered trade mark. It is the responsibility of the applicant for registration to notify the office when the application for amendment has been made and allowed. Any amendment of the specification in the conflicting trade mark and, if necessary, of the application as well, must be clear and unambiguous.

3.2  Letters of consent

Where the matter is being resolved between the parties, the Registrar may give considerable weight to a letter of consent from the owner of the conflicting trade mark. The Registrar has the discretion to accept an application under the provisions of paragraph 44 (3)(b) on the basis of “other circumstances”. Consent to the registration of the later application by the owner of the prior rights may fall within the ambit of these provisions.  In this respect,  the comments of Justice French in  Registrar of Trade Marks v Woolworths [1999] FCA 1020 (29 July 1999) are useful:

47 … The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective.

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

Consent will therefore 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 markets (so called triple identity situation).

3.2.1

Letters of consent should not contain any conditions, since the Registrar is not in a position to ensure that any conditions about the use of the trade mark are met. However, a restriction to a particular geographical area is acceptable provided the application is restricted to accord with this. If the specification included in the letter of consent is narrower than that required to accept the application under the provisions of s44(3)(b), the specification should be amended to reflect only those goods to which the consent applies. It must be clear that the applicant agrees to these restrictions before making any amendments.

3.2.2

Letters of consent must include sufficient information for the examiner to conclude that both parties are well aware of the implication and details of acceptance under s44(3)(b).  This information may include:

Details of the application:

  • application number
  • representation of the trade mark
  • the goods/services to which the owner of the conflicting trade mark is consenting.

Details of the conflicting trade mark:

  • application/registration number
  • representation of the trade mark

An example of an acceptable letter of consent is given in Annex A1.

3.2.3

When recommending acceptance on the basis of a letter of consent, the examiner should ensure that:

  • the name of the owner supplying “consent” corresponds to the name on the data base. The letter may only be taken into account if the names are the same; and
  • the signatory to the letter is the owner of the conflicting trade mark or a person authorised to sign on behalf of that person; and
  • an endorsement in the following terms is entered at acceptance:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

Even though the letter of consent has been provided, the owner of the conflicting trade mark must be notified of the acceptance of the application (except where there is no Australian or New Zealand address for service) in the usual way for applications accepted under section 44.

3.2.4

Where the owner of the conflicting trade mark is a deregistered company or is a company in liquidation, a letter of consent from ASIC or the liquidator will generally be considered persuasive.

3.2.5

A general letter of consent confirming that one party is prepared to consent to any trade mark applications made by another party may be considered.  

The general letter of consent must meet the same requirements as a specific letter of consent in relation to the name of the owner providing the consent and to the signatory of the letter (detailed above) and should not contain any conditions (see 3.2.1). It must also identify the applicant to whom the general consent is being given.  However, the general consent document need not identify the applicant’s trade mark or the specific goods and services being claimed.

3.2.6

As an alternative to a letter of consent, the applicant may choose to supply a copy of an existing agreement between the two parties.  Such an agreement will only be acceptable if it includes the information required for a letter of consent, and does not include any conditions on use of the trade mark.

3.2.7

In the case where there is a commercial relationship between the parties, information from a reliable source (attorney, agent, owner or authorised representative of the owner) clarifying this relationship and the use of the trade mark may be sufficient to allow the trade marks to co-exist under the provisions of s44(3)(b).  For example, if the applicant company is a wholly owned subsidiary of the proprietor of the conflicting trade mark, information advising of this relationship would be relevant. However, the information would need to be specific as to the relationship, and be provided by a source who is clearly able to give evidence as to the facts and is prepared to take responsibility for the accuracy of the information provided.


3.3  Cancellation of the conflicting trade mark

Seeking voluntary cancellation of a registered trade mark is a method of overcoming citations which is open to the applicant, but which should not be suggested by examiners as they are unaware of the commercial circumstances surrounding the use or otherwise of the conflicting trade mark. If the applicant decides to enter into negotiations of this kind it does not constitute grounds to defer acceptance of the trade mark application pending the outcome of the action.


3.4  Assignment of the application or conflicting trade mark

The grounds for rejection under section 44 may be withdrawn if the owner of the application and the owner of the conflicting trade mark come to an agreement where one party will assume ownership of both the trade marks. An application to record the assignment or transfer must be made under section 106 of the Act. Assignment can apply to pending or registered trade marks. A partial assignment may be possible if the conflict between the trade marks is only in respect of some of the classes nominated. The applicant must notify the Registrar when this has been actioned.

Examiners must ensure that the partial assignment encompasses all the goods/services that are likely to cause conflict with the application before withdrawing the grounds for rejection.