News & Insights

The first person to successfully apply for and register a trade mark is given priority of protection in Australia.

If a trade mark application is found to be similar to a pre-existing registered trade mark, it can only be accepted for registration if the pre-existing trade mark is removed from the register, or if evidence demonstrates:

• continuous prior use in Australia of the applied-for trade mark from before the priority date of the registered trademark through to the filing date;
• honest concurrent use in Australia of the applied-for mark during a substantial period of coexistence with the registered trade mark; or
• other circumstances which may allow the later trade mark application to be accepted (e.g. a letter of consent from the pre-existing trade mark owner).

opposition of trade mark registration

Espresso Republic (‘ER’), a coffee roaster company based in the US attempted to extend protection of its trade mark rights to Australia for the below logo (left). However, Coffee Republic (‘CR’), another coffee roaster company based in Australia had already registered its similar trade mark in 2017 (below right), though in a different class.

Following examination of the application where no grounds of refusal were raised, ER’s extension of protection was approved and the decision was published in the Australian Official Journal of Trade Marks. Displeased with the outcome, CR opposed the extension of protection to Australia.

Remarkably (and in quite an unusual occurrence), both ER and CR agreed during the course of the opposition that –

1. the trade marks were deceptively similar; and
2. CR’s retail services were closely related to ER’s goods, being coffee and tea products.

proving continuous prior use

Accordingly, CR in establishing that the trade marks were deceptively similar and for closely related goods, the onus fell on ER to establish that it had continually used its trade mark in Australia before CR registered its trade mark. The evidence put forward by ER did not demonstrate the use of its trade mark in Australia prior to CR’s filing date because:

• ER’s purported prior trade mark use on its website and social media was not directed to Australia

In Ward Group Pty Ltd v Brodie & Stone plc it was established that where online publications or statements are made to the world at large, and not to persons or subscribers in a particular jurisdiction, there is some difficulty in regarding them as having been made by a website in a particular jurisdiction. In this case, while ER’s website did have a drop down list of countries that included Australia (along with every other country and land mass in the world, including Antarctica), it was held that “Australia is not in this list because the form is directed or targeted at this country, but simply because Australia is a country”.

It may have been a different outcome had the drop down list been a targeted list of countries in which ER intended to, or actually did, do business. Better still, would have been to include a webpage as a part of its website that states contact details for different countries including a phone number and email address.

• ER’s prior use of the trade mark in Australia could not be deemed as ‘continuous’

ER tried to put forward invoices of coffee bean shipments made to Australian businesses in 2013, 2017, 2018 and 2019. However, using the judgment of Maugham J in Smith Bartlet & Co v British Pure Oil Grease and Carbide Co Ltd, it was determined that two shipments of coffee beans between 2013 and 2017 (when CR registered its trade mark) was insufficient and could not be deemed as ‘continuous’.

ER was unable to prove continued prior use and therefore CR was successful in establishing a ground of opposition. The registration of ER’s trade mark in Australia was refused.

take-away points:

• It is important to register your trade marks. If ER had done so when it first started shipping to Australia, it would have succeeded in this case and likely have prevented CR from registering its trade mark in 2017.
• It is recommended you instruct an experienced IP solicitor or trade mark attorney to ensure your trade mark specification (description of goods and/or services) is correctly drafted. If the specification for CR’s trade marks had specifically included the sale of coffee, it’s likely that its trade mark would have been raised as a citation to the extension of protection of ER’s trade mark (and could have saved CR the cost associated with an opposition action).
• By relying on its prior registration, CR was able to successfully oppose the subsequent registration of ER’s trade mark in Australia.
• As per both Ward Group Pty Ltd v Brodie & Stone plc and Valve Corporation v Australian Competition and Consumer Commission, to demonstrate that an overseas business’ online representations to the world (e.g. on social media or its website) are directed to customers in Australia, there must first be an existing relationship with customers in Australia, or an explicit indication that the website is directed to Australia.
• Registration of trade marks is an inexpensive task that provides you with great protection.

The IP team at Macpherson Kelley is experienced in registering trade mark applications and providing businesses with strategies to protect their IP both in Australia and internationally. Contact Mark Metzeling or any of our specialised IP Team if you wish to discuss your IP portfolio.