You didn’t register your trade mark and now someone who has just started trading has applied to register a trade mark identical to yours for themselves.  What can you do?

If you’ve been using your trade mark for a while, and have built a reputation in your brand, it may be possible to apply to have the competing trade mark application rejected, or registration revoked, on the basis that its registration would cause consumer deception and confusion in the market place. These arguments are based on a breach of the Fair Trading Act, and Passing Off.  The law of Passing Off prevents traders from appropriating the goodwill of their competitors by “passing off” their business as either being that of, or being associated, with the business of another.

Further, but depending on the circumstances, it may be possible to have the application rejected or registration revoked on the basis that it was filed and obtained in bad faith.

Unfortunately it is often after a competitor enters the market that you become aware of their trade mark registration. At that point, depending on costs your only option may be to negotiate with the applicant/owner to allow your “co-existence” with them so that you can be sure that they won’t pursue you for trade mark infringement in the future. While this provides certainty that you can continue to use your trade mark uninterrupted, it would of course be an unfortunate outcome if it is you who has built the value in the brand.

Further, although these options are available, the simplest way to avoid this situation is to register your trade mark(s) early in the life of your business! We are able to offer you a fixed fee for trade mark applications.