We recently spoke with Blake Knowles, partner at Cullen’s, to discuss Australia trademark protection issues.
1. Please tell us a little about your background and brand protection experience.
Since joining Cullens, I have been responsible for managing, protecting and enforcing the trademark portfolios of several successful and well known Australian and overseas companies. I regularly prosecute trademark applications, represent clients in trademark oppositions and removal proceedings, and assist with enforcement of trademarks and resolution of disputes.
I was previously employed for ten years in the Australian Trade Marks Office. I am a former Senior Examiner, Principal Examiner and Examination Team Leader. During my time as an Examiner, I assessed several thousand trademark applications. As an Examination Team Leader, I was responsible for the management and mentoring of twelve other trademark examiners.
At the time I left the Australian Trade Marks Office, I was the Assistant Director of Trade Marks Hearings & Oppositions. In this role, I worked on a range of trademark legal and policy issues and was also responsible for authoring significant parts of the Trade Mark Office Manual of Practice and Procedure as well as creating training modules for trade mark examiners.
2. What should U.S. companies be doing to protect their valuable brand names in Australia?
Fortunately in Australia it is rare for applications to be filed in bad faith for the purposes of usurping a valuable overseas brand. Most disputes arise from adoption of similar marks by multiple parties. The usual strategies for brand protection should be employed: i.e., registering early (claiming convention priority where possible from foreign applications), obtaining clearance searches prior to commencing use, and monitoring whether applications have been filed by other parties for key marks (or confusingly similar marks). Local distributors should also be tasked with watching the market and reporting any potential infringements early.
3. What is required for a company to be eligible to file a trademark opposition in Australia?
4. What are some risks to companies who decide not to file a trademark opposition?
The biggest risk is exclusion from the market or ring fencing. Generally, if a company has first use and subsequent continuous use of a mark in Australia for particular goods or services, they should be able to defend an allegation of infringement by another registrant, and they will also have good prospects of obtaining their own registration on the basis of prior use (i.e. common law rights). However, their rights may be limited to the goods for which they have actually continuously used the mark in Australia, and this may inhibit expansion of activities in the Australian market. Further, unless the company can afford to challenge a third party registration (which must done through the courts), they may need to co-exist with the other registrant in the market, which can create commercial difficulties and brand dilution.
5. Do you have any other advice for companies who seek to obtain Australia trademark protection?
Many trademark applications are now filed in Australia via the Madrid Protocol. Such applications often designate many countries, and Australia is rarely the primary market of interest for such applicants. As such, an applicant who has filed via Madrid Protocol may be reluctant to incur costs defending an opposition in Australia. This can often result in an opponent winning by default, when a defense is not filed by the applicant. Another useful strategy is to register key brands as domain names in the .com.au space. Other companies who may wish to adopt an identical brand to a foreign company may be discouraged if they cannot acquire the corresponding domain name in the .com.au space.