(IP Australia), has updated its practice concerning letters
Previously the position of IP Australia has been 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 has not always been 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 that:
Consent will therefore generally be considered persuasive
even in those cases where the trade marks are substantially
identical, the goods and/or services the same and the trade
marks used in the same markets (so called triple identity
It is interesting that the practice note refers to triple
identity, but only refers 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 the application is also restricted accordingly.
A general letter of consent, such as a consent to any trade
mark applications filed by the party to whom the consent is
being provided, is also likely to be accepted provided relevant
details of the parties are included. Where a general consent
previously filed is relied upon, the applicant or their agent
must certify that the general consent is still valid.
A copy of a coexistence agreement will be acceptable,
provided it includes the information required to be provided in
a letter of consent and does not include any conditions on use
of the trade mark. Changes to IP Australia's practices on
the acceptability of letters of consent should provide greater
scope for parties to agree on co-existence
An objection might be overcome without a letter of consent
in circumstances where there is a close commercial relationship
between 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
Changes to IP Australia's practices on the acceptability
of letters of consent should provide greater scope for parties
to agree on co-existence and give effect to their co-existence
agreement by permitting the concurrent registration of their
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should
be sought about your specific circumstances.
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