Opposing a Trade Mark

A trade mark identifies a product or service, distinguishing it from the goods or services of other traders. Therefore it is important to be vigilant as an owner of a trade mark to protect your business from trade marks which you believe are identical or deceptively similar to yours. You can only oppose a trade mark application during the opposition period (ie. before registration), and the objection must fall within one of the grounds for opposition set out in the Trade Marks Act 1995 (Cth). Some of the more common grounds for opposition include:

  1. the applicant is not the true owner of the trade mark;
  2. the trade mark is substantially identical or deceptively similar to an existing trade mark; and
  3. the trade mark is likely to deceive or cause confusion.

A recent case in the Federal Court of Australia highlights some of the matters to consider when contemplating opposing a new trade mark registration.

In Qantas Airways Ltd v Edwards [2016] FCA 729 the Court dismissed an appeal brought by Qantas against a decision made by the Registrar of Trade Marks regarding a stylistic representation of part of a kangaroo being registered as a trade mark. The Court found that this trade mark was not closely-related to Qantas’ registered trade mark. This was because ordinary members of the public would have clear recollection and understanding of Qantas’ trade mark and the opposed trade mark was such that it would not likely cause deception or confusion, regardless that both trade marks had a descriptive Kangaroo.

If you or someone you know wants more information or needs help or advice on trade marks, please contact us on 08 9422 8111 or email buslaw@taitlegal.com.au.