Negotiating trademark letter of consent and protection overseas

Discussion in 'Intellectual Property Law Forum' started by Ed Gray, 8 June 2018.

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  1. Ed Gray

    Ed Gray Member

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    I own a trade mark, it was registered in Australia in 2006, but not overseas. My trademark has been actively used, in Australia and overseas, from 2006 to current day.

    I received notification from IP Australia that a new Australian company was attempting to remove my trademark for non use. This new Australian company wants to register their own very similar worded trademark for the same class of goods/services as my own trademark. This new Australian company registered their trademark overseas in 2017 but is unable to currently register it in Australia.

    I contacted the company about their non use application. After lengthy correspondence, the company withdrew their non use application. Now the same company is attempting to force coexistence. They are seeking a letter of consent for both trademarks to exist on the register and are threatening another non use application.

    Two questions:

    1 - Although it is not my preference, I am considering a letter of consent. Would it be reasonable to seek a fee for providing the company a letter of consent, and if so, what would be a reasonable fee for providing a letter of consent?

    2 - Does my trademark, registered in Australia but not overseas, but used in Australia and overseas since 2006, have any protection overseas? For instance, can this new Australian company, who registered their trademark overseas in 2017, demand I stop using my trademark unregistered overseas? Does my trademark infringe on their overseas trademark even though my trademark has existed, in unregistered status overseas, since 2006?

    Appreciate any advice.
     
  2. Leonard Mancini

    LawTap Verified Lawyer

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    Hi Ed

    In answer to your questions:

    1. Yes you can ask for a fee to consent. It is usual to seek to recover your IP attorneys fees associated with settling and providing the letter of consent. How much generally depends on how much your attorney costs! I have seen requests as low as $1000 and as high as $7000. But I would certainly not rush into this.

    2. They could if it is a first to file country like China. In first to file countries its the first to register a TM that owns it. Prior use will not protect you even if it is in that country. Thats why it is important to file applications as early as possible in Countries like China. In First To Use countries, the first person to use a TM owns it, even if they do not register it and that means there is often a defence to infringement for such persons.

    Definitely worth discussing with a registered trade mark attorney or an experienced IP lawyer. Just be careful there are organisations out there that are neither TM attorneys or lawyers that offer TM services.

    Cheers
    Len
     
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  3. Ed Gray

    Ed Gray Member

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    Thanks very much, Len. Really appreciate your advice and clear explanations of the issues involved. Good tip also on where to seek further advice. Many thanks again. Cheers Ed
     
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