Simpsons recently represented Zylux Distribution, a leading provider of automotive solutions, before the Trade Marks Office in defending its pending trade mark TYREMATICS TAKING THE PRESSURE against Bridgestone Corporation.
Zylux’s trade mark for tyre pressure systems was accepted for registration by the Australian Trade Marks Office and was not opposed during the three-month opposition period. However, before the trade mark was registered, Bridgestone Corporation sought an extension of time during which to lodge a notice of opposition.
All trade marks, after being examined by the Trade Marks Office and accepted as registrable, must be advertised for opposition – this allows any person a period of three months (this will be reduced to just two months after 15 April 2013) to oppose a trade mark on a number of grounds stipulated in the Trade Marks Act 1995 (Cth) and to attempt to prevent it from being registered.
The most common grounds of opposition are: (a) similarity of a pending trade mark to an earlier trade mark; (b) a pending trade mark being contrary to law (e.g., it infringes copyright or its registration could cause deception or mislead consumers); (c) a pending trade mark being similar to another trade mark that has acquired a reputation in Australia; and (d) a pending trade mark being descriptive of the goods or services it has been applied for.
Bridgestone was alerted as to the existence of Zylux’s trade mark only after the opposition period had expired.
Bridgestone claimed that, but for the error or omission of its attorney caused by the end-of-year rush and backlogs in processing trade mark correspondence, it would had been alerted of Zylux’s trade mark before the expiry of the opposition period and it would had immediately opposed the trade mark. The thrust of Bridgestone’s case was that a single error of its attorney prevented it from opposing the trade mark and it should be granted an extension of time during which to do so.
Zylux argued that for a late application of time to be granted it must be demonstrated that Bridgestone had an intention to oppose its trade mark during the three-month opposition period and that this intention had been frustrated by the errors or omissions of Bridgestone’s attorneys. It was submitted that Bridgestone could not have had a requisite intention because it simply did not know of the existence of Zylux’s trade mark until after the opposition period expired. In the circumstances, Zylux submitted that Bridgestone’s extension of time application should be refused.
The Delegate of the Registrar of Trade Marks agreed with Zylux and refused to grant Bridgestone’s application for an extension of time in which to lodge a Notice of Opposition.
This case demonstrates the importance of having trade mark watch/monitoring systems in place to be aware of your competitors’ potentially similar trade marks and to engage trade mark lawyers to do clearance searches before you file your own trade mark – there may already be a very similar trade mark, which could prevent your trade mark form being registered.
For all trade mark related matters, please contact trade mark lawyer Mindaugas Skavronskas.