This week, I was contacted by the Sydney Morning Herald, to speak about a particular trade mark matter. While speaking about that matter would require my client’s authority, I jumped at the chance to give the SMH a list of trade mark system changes I believe would help SMEs. I thought they could help me get my grand ideas into the public dialogue. But…I don’t know if these trade mark system improvements were the sort of juicy soundbites the SMH was hoping to get from me???
In any event, I still think these ideas are worth something so, here goes:
1) Section 44 should not be a ground for opposition. In cases where IP Australia has repeatedly indicated a mark is not substantially identical or deceptively similar to earlier marks (during examination), it is a harsh blow when IP Australia does a complete 180 and adopts the polar opposite position (after an opposition)…and then sees no reason why a costs order should not be issued. It might be more appropriate if s 44 grounds were not included in the opposition process. If a third party believes IP Australia has made a mistake during examination, failing to raise a relevant citation, then it is open to that third party to request revocation of acceptance. That way, if IP Australia concurs that it has made an error during examination, the applicant is not lumped with a costs order when IP Australia decides it has made a mistake (as there are no costs orders following a simple revocation of acceptance).
2) It is incredibly costly and risky (if security for costs is requested, the director of the SME may have to put their house up as security) for an SME to pursue the large multinational for (even blatant) infringement by the large multinational through the courts. Therefore, the trade mark registration can feel a bit like ‘snake oil’. If it achieves nothing, what has IP Australia sold the owner…? As a possible solution, it might be helpful if Australia implemented legislation that required large bricks and mortar grocery stores and chemists to:
a) put it in their supplier agreements that all suppliers must show a current trade mark registration for goods they wish to supply to the large retailers, and
b) have take down notice provisions, just as we expect online marketplaces and social media sites (such as Amazon, Facebook, Instagram and Tik Tok) to have.
Invariably the large multinationals use large retailers as outlets to sell their infringing wares, so if the large retailers were required to act on these take down notices and remove infringing stock, it would be easier for SMEs to police their trade mark rights.