Australia: Trade Mark Watching – Keep time on your side

Intellectual Property Alert: 9 July 2013

Brand owners are often under a common misapprehension that, after registering a trade mark and securing vital rights for their brand, they can rest on their laurels when it comes to monitoring potentially conflicting third party trade mark applications and taking prudent enforcement action. On the contrary; an effective and productive brand protection strategy, like all core business practices, requires ongoing time, effort, adaptation and investment. Putting a trade mark watch service in place once your trade mark is filed or shortly after registration is as important as pre-filing searching and brand clearance.

Recent amendments to Australia's intellectual property regime have focused attention on the importance of proactive brand protection with the introduction of the "Raising the Bar" changes under the Intellectual Property (Raising the Bar) Act 2012 (Cth) and the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013. Importantly, the advertising period for new applications, and window for lodging oppositions against conflicting marks, has been reduced by a third, from three months to two months for all new applications filed on or after 15 April 2013.

Partner Hayden Delaney and solicitor Amanda Dominick explain the benefits of trade mark watching; the often-overlooked, highly effective yet inexpensive brand protection tool that keeps time on your side and ensures you are in the best position to strategically police and safeguard your brand. We also discuss how you can take advantage of one of ten free three-month watch trials to give you first-hand experience of how HopgoodGanim's trade mark watch service can lift your brand protection strategy to the next level.

Key points

  • A reliable trade mark watch service, tailored to the underlying brand and specific infringement concerns, is an essential part of any effective brand management and enforcement program.
  • It is up to brand owners to proactively police and enforce their brand – in Australia, brand owners are not automatically notified when a third party files an application for an identical or similar trade mark, so investment in a trade mark watch service is imperative.
  • A recent decision of the Australian Trade Marks Office (ATMO), emphasises the importance of pre-filing trade mark searching and how having a trade mark watch service in place not only ensures you are informed of conflicting marks at the right time but, in a worst case scenario situation, can be the persuasive evidence you need to demonstrate an intention to get to "an informed position" (i.e. a position of knowledge from which you could have decided to oppose an application for a conflicting mark within the advertising period).
  • HopgoodGanim's intellectual property team is pleased to offer a free three-month worldwide watching trial to the first ten clients to apply before 31 July 2013.

Trade Mark Watching

A trade mark watch service works by monitoring new applications to determine whether any are identical or similar to the "watched" trade mark in relevant classes, and then informing you when a potentially conflicting trade mark application is filed and the deadline for commencing opposition action. In this regard, it is crucial to be aware that the ATMO will not directly tell you when third party applications are filed that might conflict with your trade mark. For this reason, trade mark watching is one of the best investments and "insurances" a brand owner can put in place to ensure prompt notification of applications for identical or confusingly similar trade marks. At a time when bad faith trade mark filings are at an all time high, a reliable and accurate watch service is the best and most cost-effective method to preserve your brand equity and prevent against dilution in the jurisdictions that matter to you and your brand.

HopgoodGanim's watch service includes continuous monitoring of new trade mark applications in relevant classes on a "world-wide" basis (in over 200 countries) or within the specific regions, individual countries or filing jurisdictions important to your business. Our intellectual property team does the hard work for you by reviewing your "watch hit-list" and then promptly reports the most concerning new applications to you in emailed watch reports, tailored to meet your business needs. Our watch reports regularly alert you to applications for trade marks that are identical or confusingly similar to yours, and are delivered to you shortly after publication of the application commences. Regular and timely reporting allows you to take action early to safeguard your brand from infringement or dilution, and avoid the often complex, protracted and expensive alternatives to commencing an opposition action during the trade mark advertising period. HopgoodGanim is pleased to offer ten free three-month world-wide trade mark watch service trials.

During the three-month period, we will watch your nominated mark in your core-classes in over 200 countries and provide you with regular watch reports. For further information and to apply for this offer, please email Amanda Dominick by clicking here. Please note you must be an existing HopgoodGanim client to take advantage of this offer; the complimentary three-month watches are limited to ten in total on a first-come basis; only one watch is available per client; and each watch trial must commence before 31 July 2013.

Trade Mark Oppositions

In Australia, all trade mark applications must be advertised for opposition after passing through the initial examination stage and being "accepted" by IP Australia. The purpose of the opposition period is to allow any person, "the opposer", to challenge a trade mark provided the opposer can establish and support one of the permitted grounds. Some of the more common grounds for opposition include similarity to an earlier filed registration or pending application, that deception or confusion is likely because of the reputation of another trade mark in Australia, the applicant not being the true owner of the mark or the mark applied for being contrary to law (i.e. infringement of third party copyright). If the opposer is successful, the opposition will prevent the mark applied for from completing the application process and, therefore, preclude the mark from achieving registration.

The Raising the Bar changes that came into effect on 15 April 2013 reduced the advertising period, and thereby the time during which a notice of opposition can be lodged, from three months to two months. As a double blow, if a potential opposer fails to oppose a mark in the permitted two month period, the Raising the Bar changes have also limited the grounds on which extensions of time can be filed and will be granted.

Requests for extensions of time to file a Notice of Opposition may now only be filed on the basis of an error or omission by, or in circumstances beyond the control of, the potential opposer, their agent, the Trade Marks Registrar or an employee. Consequently, with the smaller opposition filing window and limited grounds available to apply for extensions of time, the onus on brand owners to keep informed is now even greater. It is therefore imperative to maintain strict administrative monitoring processes to ensure that relevant opposition deadlines are known and acted on before it's too late.

Case Study: Bridgestone – Out of time and off the mark

Bridgestone Corporation (Bridgestone) recently missed the mark (the opposition deadline), after being unsuccessful in a decision of the ATMO1 regarding its application for a late extension of time in which to oppose a competitor's earlier filed trade mark application. In July 2012, Bridgestone's competitor, Zylux Distribution Pty Ltd (Zylux), filed an application for the composite representation of TYREMATICS TAKING THE PRESSURE (depicted below) in Class 9 including claims for tyre pressure systems.

Zylux's application for the composite mark passed through the initial examination stage and was then advertised for three months under the pre-Raising the Bar regime from 4 October 2012. Just over a month before the advertising period for Zylux's application commenced, Bridgestone had filed an application for TYREMATICS (plain word) that included a range of conflicting claims in Classes 9 and 42. Evidence presented to the ATMO suggested that Bridgestone had filed its application without conducting pre-filing trade mark searches for TYREMATICS which, had even the simplest of searches been done, would have warned Bridgestone of Zylux's earlier filed application.

Due to a series of unfortunate administrative errors, the adverse examination report for Bridgestone's mark (which included a citation for Zylux's application) was not reviewed or reported for over a month after it was issued. Had Bridgestone's attorneys reviewed the report at the time of issue (or had a watch service in place for TYREMATICS), they would have been put on notice of Zylux's application in late-December 2012 which, incidentally, would have given them time to oppose the application before the end of the advertising period on 4 January 2013. Bridgestone filed an application for late extension of time on the basis of an "error or omission by the person applying for an extension of time, or by that person's agent".

The ATMO Hearing Officer refused to allow the extension of time, affirming policy and precedent that Bridgestone must have held a specific intention to oppose the application during the advertising period (or must have at least demonstrated an intention to get to an "informed position" from which it could decide to oppose – for example, by setting up a trade mark watch service). Additionally, there must have been a causal link between the agent's error and Bridgestone's failure to file the notice of opposition before the deadline. Unfortunately for Bridgestone, they were completely unaware of the Zylux application until well after the advertising period had concluded and, accordingly, the Hearing Officer agreed with general legislative sentiment that it would be an unacceptable situation if "any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention".

The takeaway message from Bridgestone's failure is that, even without specific knowledge of the Zylux application, Bridgestone may have been successful if it had been able to demonstrate that it had taken any of the usual defensive steps (pre-filing searching or trade mark watching) that would have put it in an informed position during the advertising period from which it could have decided to oppose. The Hearing Officer made damning reference to Bridgestone's failure to take "any of the generally accepted actions to investigate or protect the new trade mark of the application filed on 13 September 2012, such as pre-searching the Trade Marks Register, or instigating a watch service in respect of the crucial word TYREMATICS". Bridgestone's predicament should be a warning to all brand owners to think seriously about your brand protection efforts and whether you are in the best "informed position" that you can be.


1Bridgestone Corporation v Zylux Distribution Pty Ltd 2013 ATMO 19

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.