Trade marks can be tricky. Some of you may have recently read about a business owner that received a cease and desist letter from lawyers acting for Ikea. The business owner had allegedly infringed Ikea’s registered trade mark. It serves as a lesson to other small business owners about the pitfalls of do-it-yourself trade mark applications.
The first thing to understand is that large corporations can be very active in monitoring trade mark application filings for trade marks that may be similar to their own registered trade marks. This is a prudent activity for anyone that holds a registered trade mark and is essential to protecting your intellectual property. If you are using a trade mark or business name that is similar to a registered trade mark, you may be inviting trouble by filing an application. At the heart of the matter in question, the business owner used a business name that used the ‘kea’ suffix. The business sold various products for customising Ikea furniture. After filing a trade mark application the business owner received the cease and desist letter. After indicating to Ikea’s lawyers that the application would not be withdrawn, Ikea opposed the registration of the trade mark.
Opposition – part of the trade mark application process
Following the acceptance of a trade mark application, IP Australia advertises the application for opposition in the Official Journal. It is the Journal that many large corporations monitor regularly. A party that wishes to oppose an application may file a notice of opposition (which includes a statement of grounds and particulars on which the opposition is based). If the notice of opposition is properly filed within the proper time frame, the applicant must file a notice of intention to defend in order to maintain the application and proceed with the opposition. If a notice to defend is not filed within one month of the day the statement of grounds and particulars was given to the applicant, the application will lapse.
Get advice before trading
It is a fact of business that large corporations spend significant money to protect their intellectual property. They do so for a very good reason. Intellectual property is valuable and is worth protecting. An application for a trade mark may be opposed on a number of grounds including where the applicant’s trade mark is substantially identical with, or deceptively similar to a trade mark registered by another person in respect of similar goods or closely related services. It is on this basis that Ikea opposed the business owner’s trade mark application. The business owner is now faced with the prospect of rebranding the business after operating for over a year and establishing a customer base. There is also a possibility that infringement proceedings seeking damages could be brought against the business by Ikea. But, we won’t deal with that issue here.
It can be a substantial blow to a business to have to rebrand quickly. If you have spent time and money in building a brand, it can be lost very quickly and your sales may suffer. Why put yourself into that position? The business owner after doing their own research felt confident with making an application for a trade mark. However, that confidence was misconceived. Trade mark law can be technical and knowledge of the case law around trade marks is essential. Not all trade marks can be protected by registration and opposition proceedings can be costly if you want to fight an opposition.
We understand that, at the start of a business, money can be tight. Starting a business can mean having to choose carefully where you spend your money. You should think very carefully about your brand and any trade mark or business name that you are planning to use. Spending a little money on getting legal advice about your trade mark or business name before you start trading can save you significant time and money, even a short way down the track. That advice could turn into one of the best investments you’ve made if, as a result, you select a trade mark that can be protected by registration. That registered trade mark could become valuable intellectual property for you and your business.
If you have any questions about a trade mark or business name that you are currently using, or plan to use please give us a call on 02 6332 6655. We love working with businesses who want to get their intellectual property right. Alternatively, email us at email@example.com and we will do our best to answer your question.
Some information regarding the registration of trade marks can be found on IP Australia’s website.
David Killen is an intellectual property and commercial lawyer with a particular interest in helping start-ups and existing businesses protect and manage their intellectual property assets. Contact David today to discuss your needs.