Business Law

Brand protection: overcoming hurdles to registering a trademark

B2B Editor6 November 2014

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Our firm hosts an annual not-for-profit networking event called “Sweatworking™”. The term “Sweatworking” was created by our Director, Susan Proctor in 2012. Given our firm’s considerable investment in the event, we sought to protect that investment by applying for a trade mark of the word “Sweatworking”.

Adverse report

Once a trade mark application is lodged, it is reviewed by a Trade Mark Examiner who determines whether the application is acceptable or whether there are grounds for rejection. Our application received an “Adverse Report” stating that, in that Examiner’s opinion, our trade mark conflicted with an existing registered trade mark (s44 of the Trade Marks Act 1995 (Cth)) because it was substantially identical or deceptively similar to an existing trade mark of the word “Sweat”.

Actions taken & successful outcome achieved

Receiving an Adverse Report is problematic but not fatal to an application. Steps can be taken to overcome s44 objections raised by the Examiner, including: making submissions that the marks are not substantially identical/ deceptively similar; demonstrating prior or honest concurrent use; and/or seeking consent from the owner of the existing mark. Given the charitable nature of the event, we sought consent from the owner of the existing mark to allow our mark to be registered. The owner refused to grant that consent.

We then proceeded to make submissions to the Examiner, setting out evidence demonstrating that the marks were not substantially identical/ deceptively similar and that there were no conflicting goods/services. Those submissions included that:

* the word “Sweat” should not have been registered in a class of services relating to the fitness industry as other traders should legitimately be permitted to use it;

* there are 67 other existing registered trademarks incorporating the word “Sweat”;

* “Sweatworking” is not a real word but a made-up portmanteau, noting the long history of portmanteaus as trade marks (i.e. Microsoft, Intel, Compaq, Pinterest, Wikipedia);

* the appearance, spelling, sound and meaning of the marks are sufficiently different that they could not be substantially identical/ deceptively similar;

* the descriptions of services were sufficiently different that they could not be conflicting; and

* offering to amend our description of services covered by the trade mark. Our submissions to the Examiner were ultimately successful and our trade mark was registered.

If you are considering taking steps to protect your corporate brand, intending to lodge a trade mark application or have lodged an application but received an adverse report, we can assist you.

Mark Love, Legal Director, Business Law 9th Floor, Canberra House, 40 Marcus Clarke Street,
Canberra ACT 2601
T: 02 6274 0810 |