The clock is ticking - time for trademark owners to keep watch

A recent decision of the Australian Trademarks Office, along with the Raising the Bar legislative changes, have placed greater pressure on trademark owners to keep a watch on the trademark activities of their competitors.

In Bridgestone Corporation v Zylux Distribution Pty Ltd (2013 ATMO 19), a trademarks hearing officer considered Bridgestone's application for a late extension of time in which to oppose a trademark application based on "an error or omission by the person applying for an extension of time, or by that person's agent". In denying the application, the hearing officer confirmed case law which states that there must be a causal connection between the error by the agent and the opponent's failure to file the notice of opposition.

Bridgestone was not aware of the existence of the Zylux application due to an error by its agent in referring an examination report. Despite submissions from its representative that, if it had been aware of the Zylux application before the opposition deadline, Bridgestone would have opposed, the hearing officer noted the absence of any evidence demonstrating that:

• Bridgestone had undertaken any search of the register prior to filing; or
• Bridgestone or its representative considered it appropriate to keep a watch for similar marks on the Australian Register.

In light of the Raising the Bar legislative amendments which came into effect on April 15 2013 and shorten the opposition deadline to two months from the date of advertisement of acceptance, it is now even more important for trademark owners to keep a watch out for applications for similar trademarks. To this end, it would be prudent for trademark owners to consider implementing monthly trademark watches which can be conducted by reference to mark, class(es) or party name.

Mark Williams, Allens, Melbourne