To consent or not to consent?

0

That is the question: Whether ’tis nobler in the mind to suffer the slings and arrows of consumer confusion, or to take arms against a sea of potential troubles and by opposing end them.

What on earth is this guy talking about?” I hear you say. I’m talking about to consent – or not – to registration of an identical or similar trade mark to yours.

Let me explain. The New Zealand Trade Marks Register has become very crowded, such are the numbers of registered trade marks now on it. It has consequently become quite common for a person seeking to register a new trade mark to find their application to do so “blocked” by one or more previous registrations.

To overcome this hurdle, the applicant must either convince the trade marks examiner at the Intellectual Property Office that their mark is sufficiently distinctive from those preventing its registration, or it must obtain consent from the owners of the prior registrations.

At first glance, a request for consent does not seem a particularly difficult question to answer. However, the consent request involves consideration of a number of issues, not least because the person asking could be a wolf in sheep’s clothing.

The issues a trade mark owner needs to consider include:
1. If I consent, what is the impact on the distinctiveness of my trade mark? Is confusion among my existing and potential customers likely to result?

2. If I consent, what is the potential effect on where my business trades now and where it may trade in the future?

3. If I consent, and a problem arises in the future because of how the other person has used their trade mark, am I prevented from taking action?

4. If I don’t consent, will the other person attack my registration? Will they try and remove it from the Trade Marks Register to secure their registration?

5. If I don’t consent, will the other person use their trade mark anyway, and if so, what is the impact on the distinctiveness of my trade mark etc? Do I need to try and stop them from using their trade mark?

6. If I don’t consent, and I have to issue legal proceedings, what will those proceedings cost?

If you receive a request for consent, therefore, consider all the possible ramifications before replying. Work out with (we recommend) the assistance of a trade mark lawyer whether ’tis indeed nobler in the mind to suffer the slings and arrows of consumer confusion, or to take arms against a sea of potential troubles and, by opposing, end them.

Share.

About Author

Ben Cain

Ben Cain is an Senior Associate at James & Wells Intellectual Property and a LEADR accredited mediator. Email: benc@jaws.co.nz | www.jaws.co.nz