(IP Australia), has updated its practice concerning letters of consent.
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 situation).
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 information provided.
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 marks.
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.
