A recent decision1 in the Trade Marks Office highlights how important it is for trade mark owners to undertake regular checks of the Australian Trade Marks Register (Register). Trade mark owners who do not file an opposition to a competitor’s trade mark application within the two month time frame provided for in the Trade Mark Regulations 1995 (Regulations) simply because they were not aware of the application will not be granted an extension of time to file a notice of opposition.

Key lessons

  • If you fail to oppose a trade mark application within the two month time period provided for in the Regulations, an extension of time will not be granted if the reason for the failure to oppose is lack of awareness of the existence of the trade mark application.
  • In order to maintain an “informed position” about potential competitor trade marks, trade mark owners should implement a regular trade mark watch system.
  • New trade mark applications should be filed following a comprehensive search of the Register to ensure contemporaneous trade mark applications filed by competitors are captured.
  • Recent amendments to the Regulations mean that as of 15 April 2013, the time period in which oppositions may be filed has been decreased from three months to two months. Timely identification of competitor trade mark applications is therefore more critical than ever.

The issues

On 3 July 2012, Zylux Distributors Pty Ltd (Zylux), a distributor of automotive products in Australia, filed an application for TYREMATICS TAKING THE PRESSURE (the Zylux Mark) in respect of class 9 goods in relation to tyre pressure systems. The Zylux Mark was advertised as accepted in the Australian Journal of Trade Marks on 4 October 2012.  On 13 September 2012, Bridgestone Corporation (Bridgestone) filed a trade mark application for TYREMATICS in classes 9 and 42 in relation to tyre pressure and monitoring systems.

When a trade mark is filed and accepted for registration, it is advertised for two months (although at the time of this decision, under the old Regulations, the period was three months)2.   During that time, any person may file an opposition to the registration of the mark on any of the grounds listed in Part 5, Div 2 of the Trade Marks Act 1995 (Cth).  The opposition period for the Zylux Mark began on 4 October 2012. 

Despite its own trade mark application for TYREMATICS, Bridgestone was not aware of the Zylux application until 22 January 2013, 18 days after the opposition period had ended.  Bridgestone filed an application for an extension of time to oppose the Zylux Mark. Under r 5.2(2)(b), a party may apply for an extension at any time before the trade mark is registered, provided the registrar is “reasonably satisfied” that there was an error or omission by the person applying for an extension of time, or by the person’s agent, which is sufficient to justify the delay.

Bridgestone claimed that its intention to oppose the Zylux application was “thwarted” because its attorneys were delayed in reviewing the examination report issued by the Trade Marks Office in respect of Bridgestone’s own TYREMATICS trade mark application, which would have directed Bridgestone to the existence and priority of the Zylux Mark.  As a result, the attorneys did not alert Bridgestone to the Zylux Mark until after the opposition period, which ended on 4 January 2013. Bridgestone argued that “but for” this error, it would have filed a notice of opposition immediately, as protection of its trade marks was of “crucial importance”3.

The decision

The delegate did not grant Bridgestone an extension of time to oppose.

The delegate applied previous decisions which found that the party wishing to oppose needs to demonstrate either a clear intention to oppose or a clear demonstration of an intention to get to an informed position on whether to oppose within the opposition period4.  In order to obtain an extension of time under r 5.2, the “error or omission” relied on must relate to circumstances arising after the requisite intention has been formed. When, as in this case, the party is completely unaware of a trade mark application, a specific intent to oppose in the relevant period cannot be found. A general intention to oppose all similar competitor marks is not enough. Otherwise, the delegate noted, the absurd situation could arise in which “any accepted trade mark could be opposed at any time up to registration on a mere vague hypothetical intention”5

In rejecting the application for an extension of time, the delegate also found that Bridgestone had not demonstrated its intention to establish an informed position about opposing potential trade marks during the opposition period. Criticising Bridgestone’s lack of effort, she stated7:

“There has been no indication… that Bridgestone has taken any of the generally accepted actions to investigate or protect the new trade mark… such as pre-searching the Trade Marks Register, or instigating a watch service in respect of the crucial word TYREMATICS… It appears that Bridgestone was completely unaware of the existence of the Zylux application during the entire statutory opposition period.”

The consequences

Zylux is now free to register its trade mark, and Bridgestone is unlikely to obtain registration of its TYREMATICS mark in the face of Zylux’s prior registration for TYREMATICS TAKE THE PRESSURE. This decision demonstrates the risks that companies face when they do not have proper procedures in places, such as trade mark watch services and trade mark availability searches, for protection of their existing and new trade marks.