Overview: BlackSquare Inc. recently opposed the registration of two trade marks by Cracka IP Pty Ltd—WINE COLLECTIVE and THE WINE COLLECTIVE.COM.AU. The opposition was based on claims that Cracka IP’s marks were identical or too similar to BlackSquare’s existing trade marks and could cause confusion.
Key Points of the Decision:
- Trade Marks Involved:
- WINE COLLECTIVE (Application No. 1927725)
- THE WINE COLLECTIVE.COM.AU (Application No. 1941358)
- Claims by BlackSquare Inc.:
- BlackSquare Inc. argued that they were the original owners of the WINE COLLECTIVE mark, having used it since 2009 globally and since 2012 in Australia.
- They claimed the similarity of Cracka IP’s trade marks would likely deceive or confuse customers.
- They also argued that Cracka IP’s use of the marks was misleading and contrary to law, suggesting bad faith in Cracka IP’s application.
- Findings of the Registrar:
- The Registrar found that BlackSquare Inc. did not establish sufficient use or reputation of their trade marks in Australia before Cracka IP’s filing dates.
- The evidence did not show that BlackSquare’s marks had significant recognition among Australian consumers.
- The Registrar concluded that Cracka IP did not act in bad faith and had legitimate grounds to register their trade marks.
- Outcome:
- The opposition was dismissed, allowing Cracka IP’s trade marks to proceed to registration.
- BlackSquare Inc. was ordered to pay costs associated with the opposition.
Implications for Clients: This decision underscores the importance of establishing a strong and recognizable presence in the market where you intend to protect your trade marks. Simply using a mark overseas may not be sufficient to secure trade mark rights in Australia.
Conclusion: Trade mark disputes can be complex and hinge on detailed evidence of use and reputation. Clients are encouraged to maintain thorough records of their trade mark use and seek expert advice to navigate potential conflicts. If you have not protected your brand or business name, contact our trade mark lawyers today. Remember, a registered business name does not mean your brand or business name is protected.
For further information or assistance with trade mark issues, please contact our IP team.
Written by Tyrone Walker
