Home – New Forums Find the help you need Consent to use and register a trademark similar to mine?

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  • #996834
    Shackleton
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    I have just received a letter from a legal firm representing a company which is seeking my consent to use and register a trade mark name which is similar to mine, and which would be registered in the same service class as mine.

    The difference is that my trade mark is composed of two words, while the trade mark the company seeks to register is just the first word of my trade mark and with a slightly different spelling and pronounciation (due to one letter). While industries are completely different (marine as oposed to finance) they do target the same clientele for different reasons hence the service class. Broadly retail sales versus a retail sales payment system.

    To complicate things my customers fairly often misspell or mispronounce my trademark by the name sought to be registered by that company.

    Any views would be appreciated. Cheers

    #1209185
    Lucy Kippist
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    Hi Shakleton,
    That’s quite the dilemma you have, and quite hard to navigate on your own. I’m sure there will be expertise coming your way via our experienced members soon.
    Lucy

    #1209186
    John Romaine
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    Ask [USER=20176]@JacquiPryor[/USER] she’s a trademark expert.

    #1209187
    bb1
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    Shackleton, post: 249461, member: 80542 wrote:
    To complicate things my customers fairly often misspell or mispronounce my trademark by the name sought to be registered by that company.

    I would suggest a big no just based on this one comment, do you really want your potential clients going to another website, even if they are selling a different product. They will just assume nothing to see here and move on to your competitor.

    #1209188
    JacquiPryor
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    Hi there,

    Noting this is general information and not advice (further and more specific info would be needed to advise further) –

    They’ve likely filed an application and you have an earlier filed mark, which is presented to them as a conflict – and, to overcome that report they want your consent.

    Is your trademark fully registered? Or, is it still itself a pending application?

    Ultimately, you are under no obligation to consent if you don’t wish to do so. If you are concerned by a likelihood of confusion between the two, depending on full circumstances then you do not have to consent, and, if they gain approval in another way might consider opposing the application at the relevant time.

    There are a few things to consider in these sorts of situations though, and each case can be different. It is one thing to politely decline to consent but you want to ensure there’s no room for them to either ‘attack’ your trademark and also determine whether they will likely gain registration even if they don’t have your consent. Answers to these questions can help (a) decide whether to consent but (b) more importantly help determine whether use by them could infringe your rights and/or whether opposing their application (if approved) is a worthy investment.

    Without knowing your mark, their mark and whether either/both of you use your mark already it’s difficult to advise further but I understand you wouldn’t wish to publicly disclose those details.

    If you’d like to sent me a private message with some further info, happy to review and comment further for you.

    Ideally it would be good to know:
    Your trademark/trademark number;
    The other party’s trademark/trademark number;
    Assuming you already use your mark for the goods/services claimed – when did you start using?
    Do you know if the other party already uses their trademark for their claimed goods/services?

    With this information I can advise more specifically on options and processes involved etc.

    #1209189
    Shackleton
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    Thank you all for your input, and thank you Jacqui for some pointers. I intend to see a trademark expert for further advice.

    For reference my trademark is fully registered and has been in use for a few years now with some use of the name for about 5 years before that. I have already had a company name deregistered for infringing on my trademark name… that however was a very small matter as the company wasn’t even operating and seemed to be squatting.

    My trademark is only registered in Australia while the other company is a growing multi national intending to launch in Australia. Their name is registered in 2 markets overseas and registered after mine. They have only been operating a few years themselves but being a financial startup have the support of investors, etc.

    Thank you all :)

    #1209190
    JacquiPryor
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    Thanks for the reply. From what you’ve suggested it seems like there’s little risk to your mark, so either you would have the stronger position to simply decline their request (and possibly stop them launching in AU) – or, even negotiate something so that you could, in the future if desired, move into their overseas markets with their consent.

    In any event – all the best and happy to answer any further queries you might have.

    #1209191
    DavidChin
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    Hi Shackleton

    Would you consider consenting for a fee? It may be possible for the applicant to still register down the track.

    Regards
    David

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