NSW Is This a Trademark Infringement?

Discussion in 'Intellectual Property Law Forum' started by Ausmaniac, 4 September 2018.

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  1. Ausmaniac

    Ausmaniac Member

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    I own a fancy trademark which comprises two words as the main mark plus additional descriptive text.

    There are 3 application for a trademark in the same category and 2 other categories containing the exact 2 main words featured in my trademark.

    I assume I'm correct in saying this is an infringement. Do I have to oppose all 3 applications separately or can all 3 be done in one opposition?
     
  2. Rob Legat - SBPL

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    Technically, an infringement occurs where someone uses a mark in business - not just when they apply for a trade mark. That doesn’t make a difference to opposing it however.

    Simply having the same two words doesn’t mean the new mark will be infringing. You’ve mentioned your mark is fancy, with additional descriptive text. If the two words are commonly used or generic, you may not be able to trade mark them by themselves. Add to that, the defining qualities of your mark may lay in its style and the additional text, all together. In short, there’s no way to tell without a full examination.

    And, by category, I assume you mean ‘class’. If the application is for a class that you’re not registered for, then the likelihood of success in opposing is going to decrease; particularly if your mark is not well known outside of its class. The important question is whether their use is likely to get confused by the public with your use (in simplistic terms).

    I’d suggest you need to file an opposition to each mark.
     
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  3. Ausmaniac

    Ausmaniac Member

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    Thanks for response Rob. Yes, I did mean class. The organization has already registered a domain and is promoting their service using the 2 word name & logo. Interestingly the applications currently lodged are also fancy containing only those 2 key words. I was unsuccessful in applying for the same 2 words in fancy logo 20 years ago as it was not descriptive enough. Again, thanks for the help.
     
  4. Rob Legat - SBPL

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    The criteria may have evolved slightly over the 20 years, but the underlying basis would not. I would be referencing your earlier attempt to trade mark, and subsequent lack of success, in any opposition you lodge.
     
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  5. Ausmaniac

    Ausmaniac Member

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    Once again, many thanks.
     
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