How Can Two Businesses Register the Same Name as a Trade Mark?
Emily Young
Your intellectual property (IP) is one of the most important parts of your business. Trade mark protection is a great way to protect your business’ IP. It usually provides you with exclusive rights to the use and commercialisation of your trade mark.
However, in certain instances, it is possible to have identical trade marks co-existing on the Australian trade mark register. This is often because the trade mark class system allows for it. This article will take you through:
- what trade mark classes are;
- how trade mark classes allow two businesses to trade mark the same name; and
- honest and concurrent use.
What Are Trade Mark Classes?
When applying for a trade mark, you must list all of the relevant goods and services that you will provide under the trade mark. These goods and services are categorised into groups called ‘classes’. These are broken down into 34 categories of goods and 11 categories of services.
The classification system, known as the Nice trade mark classification system, is recognised by many countries internationally, making it particularly useful if you have international trade marks.
You can apply for a trade mark under as many classes as are relevant to you. However, it is not possible to later add classes to your application. Instead, if you wanted to extend your trade mark protection scope, you would need to file a new trade mark application.
Relevance of Trade Mark Classes
The trade mark classification system serves as a mechanism that enables similar or even identical trade marks to co-exist. This works provided the goods and services within the relevant classes differ in each respective trade mark’s application.
For example, ‘Dove’ is known as both a personal services brand and chocolate. However, these two trade marks exist concurrently. This is because there is a very low chance of consumers confusing the two brands due to the distinctly different nature of their respective products.
IP Australia will generally accept a trade mark application, even if the trade mark within the application is identical or near-identical to another trade mark on the register, as long as the goods or services it lists are not closely related to that of the existing trade mark.
Honest and Concurrent Use
While the trade mark classification system allows for identical or similar trade marks to coexist when they belong to different classes, it is also possible for identical trade marks to coexist even where they belong to the same class. This is possible when the owners have been using their respective trade marks honestly and concurrently.
For example, consider that a business has been using a particular trade mark, unregistered, for 10 years in Western Australia for a restaurant and bar. Now consider that another bar with the same name has operated in New South Wales for the last 12 years. Both businesses are unlikely to ever provide their services outside of their respective states, unless they promote their services Australia-wide or have a national reputation.
As such, if both businesses were to apply for trade mark registration, they may both be able to achieve registration, given they both operated honestly and concurrently for many years without any consumer confusion. IP Australia would likely grant registration to the first applicant and then consider granting registration to the second applicant if they were able to supply evidence of their honest and concurrent use.
Opposing a Trade Mark
Consider you have been using your trade mark for a long time but are yet to register it, and you see that someone else intends to register a trade mark that is similar or identical to yours. In that case, you will need to file an opposition. This starts with filing a notice of intention to oppose.
You must make any opposition you file within two months of the trade mark you wish to oppose being advertised as accepted in the Australian Official Journal of Trade Marks. Once you file your opposition, you will also need to pay an opposition fee.
Secondly, you will need to file a statement of grounds and particulars within one month of filing your notice of intention to oppose. If you fail to provide this statement, your intention to oppose will lapse.
Once filed, both parties will supply evidence to back up their respective claims, and then IP Australia will decide on the opposition. There will also be an opportunity for you and the owners of the opposing trade mark to negotiate, at which stage you may decide to allow concurrent use of the trade marks.
Key Takeaways
While trade mark protection usually provides you with exclusive rights to the use and commercialisation of your trade mark, in certain instances, it is possible to have identical trademarks co-existing on the Australian trade mark register. This is because either:
- the trade mark class system allows for it; or
- you can demonstrate honest and concurrent use.
If you have any trade mark related enquiries, get in touch with our experienced trade mark lawyers. You can contact them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
While trade mark protection usually provides you with exclusive rights to the use and commercialisation of your trade mark, in certain instances, it is possible to have identical trademarks co-existing on the Australian trade mark register. This is because either the trade mark class system allows for it, or you can demonstrate honest and concurrent use.
Trade mark ‘classes’ refer to categories of goods and services available for registering your trade mark. The Nice classification system provides 45 different classes of goods and services to choose from. Importantly, IP Australia will only protect your trade mark under the goods and services classes you have chosen.