IP Australia updates practice on acceptability of letters of consent

IP Australia, the authority responsible for the registration of trademarks in Australia, has updated its practice concerning letters of consent.

Previously, the position of IP Australia was to consider letters of consent to be generally persuasive in overcoming citations where either the marks were not identical or the goods and/or services did not overlap. However, even in those cases, the general policy that a letter of consent should be sufficient was not always consistently applied.

IP Australia has now updated its practices to give greater weight to letters of consent in acknowledgement of the fact that "the parties involved in a consent situation are in a position to gauge market realities and likelihood of deception or confusion resulting from use of the two marks". Accordingly, IP Australia's current position is as follows:

"Consent will therefore generally be considered persuasive even in those cases where the trademarks are substantially identical, the goods and/or services the same and the trademarks used in the same markets (so-called 'triple identity' situation)."

Interestingly, the practice mentions 'triple identity situations', but refers only to marks that are substantially identical, rather than identical. It remains to be seen whether the practice will apply to identical marks.

To be acceptable, letters of consent should not contain any conditions, although geographical restriction is acceptable, provided that the application is restricted accordingly. As may be expected, it is also necessary for the specification of goods and/or services to correspond with that specified in the letter of consent and for the consent to contain appropriate details of the application and the cited trademark.

A general letter of consent, such as consent to any trademark applications filed by the party to whom the consent is being provided, is also likely to be accepted provided that relevant details of the parties are included. Where a general consent previously filed is relied upon, the applicant or its agent must certify that the general consent is still valid.

Moreover, a copy of a coexistence agreement will be acceptable, provided that it provides the information required in a letter of consent and does not include any conditions on use of the trademark.

An objection might be overcome without a letter of consent in circumstances where there is a close commercial relationship between the parties - for example, where the applicant is a wholly-owned subsidiary of the owner of the cited mark. However, full details of the relationship must be provided by a person who is clearly able to give evidence as to the relevant facts and is prepared to take responsibility for the accuracy of the information provided.

Changes to IP Australia's practice on the acceptability of letters of consent should provide greater scope for parties to agree on coexistence and give effect to their coexistence agreement by permitting the concurrent registration of their marks.

Sean McManis, Shelston IP, Sydney