Differentiating a Similiar Trade Mark
Today, telecommunications company Swoop Holdings is set to be publicly listed on the ASX. Yet, it faces an ongoing trade mark dispute by digital marketing and consultancy company Swoop Digital, which is unhappy about the similiar trade mark name. This comes after Swoop Holdings rebranded itself from Cirrus Communications last year in an effort to differentiate itself from other telecommunications companies in Australia.
Swoop Holdings is confident in its position, mainly due to the different industries that the two companies operate in. Swoop Digital, on the other hand, is not satisfied with this justification – particularly given that Swoop Holdings had previously engaged in web hosting services, which overlaps with some of their professional services.
This is an example of an intellectual property dispute. With so many businesses operating in today’s economy, intellectual property protection is an increasingly active space.
Who protects your trade mark?
It is the responsibility of the owner of a trade mark to monitor and oppose potential use of the trade mark. Further, while business owners are not legally required to register a trade mark, this does leave them open to legal action by somebody else who first registers that trade mark.
What if a similiar trade mark already exists?
Registering a similiar trade mark is one of the most common motives for opposing a trade mark. Likewise, trade mark owners may commonly oppose a trade mark if they believe that deception or confusion is likely. It is important to be aware of potentially similiar trade marks registered in Australia and assess whether your trade mark may be confusing for consumers.
As Swoop Holdings alluded to, whether the similiar trade mark operates in a different industry does play a role. IP Australia maintains different classes of goods and services. A general rule is that, if the class that your trade mark is registered in is completely different to the class that a similiar trade mark is registered in, an opposition to your trade mark is less likely to be successful. However, some classes are similar. For example, one class includes yarns and threads, and another class includes textiles, and yet another class includes haberdashery. More, a trade mark may be registered in multiple classes, further convoluting your ability to assess whether your trade mark operates in a different industry.
How to choose a trade mark class
Start with an assessment of your business and marketing activities. Outline where your business income stems from, what the nature of your business is, the types of products and services you engage in, and your reputation among your consumers. Remember that trade mark protection will only result for the classes you specify. However, this doesn’t mean that you will want to register your trade mark across a multitude of classes. Fees increase for each additional class you choose. More importantly, you need to have a real intention to use your trade mark in each class. It is unlikely for your trade mark to be approved for a completely unrelated class. Additionally, your trade mark can be opposed for non-use. While IP Australia has some great informational tools, because of the highly personalised nature of trade mark class selection and registration, best practice is to obtain professional legal advice that takes your unique circumstances into account.