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Intellectual Property and IT update: On your marks, get set…. monitor!

Jun 12, 2013

Brand protection has many facets.  While registering your brands, logos and slogans as trade marks is critical, keeping an eye on the trade marks for which your competitors are seeking registration is also essential.  A common way to do this is by initiating a regular trade mark monitoring program.

Many brand owners retain KCL Law to conduct regular monitoring of activity on the Register of Trade Marks to determine whether third parties may be seeking to register marks that are similar to their own brands.  Identifying these applications enables us to oppose registration and/or investigate infringing conduct on behalf of the brand owners.

Every week the Trade Marks Office publishes updated details of the trade marks that it has recently accepted for registration. Third parties, (including competitors) now have just two months from the date of this publication to oppose registration, failing which, the trade mark application in question will proceed to registration.

Trade mark monitoring services

Some brand owners have a false sense of security about their own trade mark position.  They mistakenly believe that having registered their mark they are now invulnerable and that no third party will be able to obtain registration for a similar mark.  This is true only to a point.  

While the Trade Marks Officers Examiners will usually raise an earlier filed application or registration covering an identical or very similar mark as a basis for objecting to registration, there are limits as to what objections they will raise and there are ways such objections may be able to be overcome.

Earlier trade marks registered or applied for in respect of some goods will not necessarily be raised against third party applications filed for goods of a different nature, in some cases even where the difference between goods is arguably slight.  For example, an application filed for ‘WITCHES BREW’ as a brand for beer will not be blocked by an earlier registration for the mark covering spirits and/or liqueurs only.

Monitoring is also important because the Trade Marks Office sometimes overlooks or makes questionable decisions about which marks should be raised to block new applications.  Even where an Examiner raises an objection trade mark applicants can sometimes overcome objections by filing evidence of honest concurrent use or prior use, and this evidence may be accepted by the Trade Marks Office, despite flaws in that evidence that do not get noticed at the examination stage.

At examination, the Trade Marks Office’s enquiries into similar marks are limited to comparing the subject application with the trade mark registrations and applications that appear on the Australian Register of Trade Marks.  It does not make its own enquiries as to whether similar unregistered or ‘common law’ marks are being used in the marketplace.  It does not consider issues such as whether a trade mark incorporates a third party’s copyright-protected logo.  It will not of its own initiative consider issues such as whether a trade mark applicant who distributes goods is the rightful applicant of the mark (as opposed to, say the manufacturer of the goods).  For these sorts of issues to be considered, trade mark oppositions must be filed.  And the time limits for doing so, are since April 2013, strictly limited to 2 months from the date of publication of acceptance.

Failing to monitor may be fatal

Why is opposing registration potentially so important?  Essentially failure to do so may mean that a problematic mark will proceed to registration and the registration will in many cases provide its owner with a defence to infringement if an earlier brand owner brings an action.  In other words, failing to act early by opposing registration could mean that a trade mark owner cannot prevent a third party using a very similar later filed mark even, in some cases, for similar or related goods or services to those covered by the earlier mark.  Trying to have a registration cancelled on the basis that it was improperly accepted is a far more difficult and onerous process and usually involves a Court application.

Recent decision shows the importance of monitoring

A recent decision of the Trade Marks Office demonstrates the importance of brand owners undertaking regular monitoring of the Register.  On 3 July 2012, Zylux Distributors, a distributor of automotive products, filed a trade mark application for TYREMATICS TAKING THE PRESSURE.  The mark was published as accepted by the Trade Marks Office on 4 October 2012.  In September 2012 Bridgestone Corporation filed its own application for TYREMATICS.  It did not become aware of Zylux Distributors’ application until January 2013, when it received an Examiner’s Report in relation to its own application.  This was 18 days after the opposition period for the Zylux mark had expired and as such Bridgestone was out of time.

Bridgestone sought an application to extend the time to oppose the Zylux application on the basis that ‘an error or omission had occurred on behalf of Bridgestone, justifying the delay’.  It claimed that its intention to oppose the Zylux mark was thwarted because its trade mark attorneys did not obtain the Examiner’s Report and hence did not know of the Zylux application in time to oppose.

The Trade Marks Office did not accept this and refused to grant Bridgestone the extension of time to oppose that it sought.  The Delegate of the Registrar was critical of Bridgestone for failing to implement a watch service and also conducting pre-filing availability searches, both of which would have revealed the earlier filed mark.  The Delegate said:

“There has been no indication…that Bridgestone has taken any of the generally accepted actions to investigate or protect the new trade mark…such as pre-searching the Trade Marks Register or instigating a watch service in respect of the crucial word TYREMATICS…”

From this we learn that the Registrar takes a dim view of applicants who fail to monitor the state of the Register.

Let us be your eyes

KCL Law offers a range of watch service options, ranging from monitoring the fate of one particular application filed by a known applicant, to running periodic checks for any similar marks filed in a given period. For some clients we conduct three-monthly checks on all third party applications for marks that are similar to any of more than 28 marks that the brand owner considers its most valuable.  Some clients want a summary of all marks recently filed for particular goods as this gives them insight into what their competitors are using and planning to use and register.  Trade mark monitoring can encompass the full range of branding elements that can be registered as trade marks, including names, words, slogans, logos, colours, shapes, aspects of packaging, sounds – even smells!

More information

For more information, to discuss how we can tailor and implement a cost effective and appropriate monitoring program that protects your business, please contact Special Counsel, Daniel Kovacs on (03) 8600 8859 or dkovacs@kcllaw.com.au or Principal Lawyer, Jeremy Goldman on (03) 8600 8886 or jgoldman@kcllaw.com.au.

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