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Chowbus forced to quit the Australian market as its trade mark had been taken – How to claim your rights in trademark disputes

Chowbus forced to quit the Australian market as its trade mark had been taken

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How to claim your rights in trademark disputes

The news in March this year relating to Chowbus quitting the Australia grabbed the public’s attention. The reason for the exit was because Chowbus’s trade mark had been taken by another company. Chowbus is a Chinese food delivery platform established in Chicago, USA in 2016. After the development in recent years, Chowbus’s food delivery services have covered more than 20 cities in North America. After entering the Australian market for less than a year since 2020, Chowbus issued a notice saying that its trademark had already been registered by a third party in Australia and planned to suspend its business in Australia indefinitely. In fact, trade mark registration disputes are very common globally. For example, the trademark dispute between Burger King and Hungry Jack’s in Australia, as well as the one between Apple and the Chinese company “iPad” are well-known cases that we may have heard of many times, the resolutions of which were extremely complicated and time-consuming. In this article, FUMENS will discuss whether there is any way out for companies like Chowbus to claim their own rights when facing trade mark disputes in Australia.

CHOWBUS

01

Preface
Firstly, we will need to consider whether the person registering the trade mark has actually used the trade mark or intends to use it in the future. If there is evidence proving that the person has not used or does not intend to use the trade mark, or has engaged in a malicious registration of trade mark, it is likely that companies like Chowbus are eligible to claim its rights.

02

The right to file an opposition against a registered trade mark
While trade mark registration generally carries out a ‘first in first served’ process, there are certain circumstances that may lead to the invalidation of a registered trade mark. After IP Australia accepts the trade mark registration application, others may have to right to oppose to the registration by submitting a Notice of Opposition to IP Australia, by providing reasons for the opposition. Thus, if you believe the trade mark has been registered maliciously to prevent you from using it, you may oppose to the registration by claiming that you have previously used a similar trade mark under section 58A of the Trade Marks Act 1995 (Cth) (‘the Act’). It is also possible to oppose to a registered trade mark by asserting that the registration of a registered trade mark was made in bad faith under s62A of the Act.

However, please note that the Act limits the time for filing an opposition. Any opposition to the registration of a trade  mark must be lodged within two months from the date of publication of the trademark in the Australian Official Trade Marks. Generally speaking, if the two months have lapsed, you are no longer entitled to file an opposition. However, there are other alternatives.

03

The right to apply for removal of a registered trade mark
The Act also gives others the right to apply for the removal of a registered trade mark. According to the relevant provisions, if the trade mark registered owner had no intention to use the trade mark in Australia in good faith when applying for the registration, or has not used the trade mark for three consecutive years, then any person may apply to IP Australia for a removal of the registered trade mark. Thus, if you did not file an opposition to the registered trade mark within the stipulated time limit, this approach may be used as an alternative to apply for the removal of the registered trade mark. If the registered owner fails to make a defence to the application for removal, then the registered trade mark will be cancelled.

04

The right to appeal to a federal court
In circumstances where IP Australia does not approve your opposition to or application for removal of a registered trade mark, you have the option of making an appeal to the Federal Court or the Federal Circuit Court.To give an example, the Sydney Opera House filed an appeal to the Federal Court after their opposition to the trade mark registration of “Australia China Economics, Trade & Culture Association” had been turned down by IP Australia. The case is still subject to further trial.Please beware that almost all trade mark disputes are costly and time-consuming. In the case of the Sydney Opera House, the trade mark applicant filed an application in January 2018. The application was accepted in July, then subsequently made an opposition on 24 August of the same year, which was rejected by IP Australia. It was not until recently this year that IP Australia’s decision has been appealed to the Federal Court.

05

Reciprocity Principle of the Paris Convention
In the process of applying for trade mark registration in Australia, you may also apply for priority period of trade mark registration in light of the reciprocity principle of the Paris Convention.Paris Convention for the Protection of Industrial Property is one of the most influential treaties applicable to intellectual property worldwide. Most of the world’s major countries including China, Australia, the United States and many EU countries have joined the Convention. According to the provisions of the treaty, after applying for a trade mark registration in any treaty country, there is a six-month priority period for a trade mark application to be lodged in other treaty countries.
IP
For example, A applied for the registration of trade mark ‘X’ in the United States on January 1, 2021, so A has the priority to apply for trade mark X in Australia before 30 June 2021. If B applies for the trade mark registration of ‘X’ in Australia on March 1, 2021, and A applies for trade mark registration of X in Australia on May 1, 2021, then A has the priority to obtain the trade mark registration even though A’s application came later than B’s.

06

Negotiation or Mediation
If you find yourself unable to remove the registered trade mark through any of the above avenues, you may carry out a negotiation or mediation with the other party to purchase the ownership of the registered trade mark in your own name. However, this may incur a large sum of money.It is important to bear in mind that if you do not take any action, it is very likely that you will not be able to keep using your current trade mark. Otherwise, it could constitute a trade mark infringement, in such circumstances the registered owner may sue you for compensation based on the profits you made while using the registered trade mark.

Tips

Trademark disputes are usually time-consuming and costly. According to our past experience, trademark registration is often appropriate sooner rather than later. If you have any problems with trademark, or want to register a trademark in China and/or Australia, you can consult our experienced lawyers as soon as possible.

Disclaimer

This article is only a general guide and does not apply to readers’ individual cases. Based on the information provided, readers should not make any legal decisions without seeking professional legal advice from an Australian Legal Practitioner. Fumens Lawyers hereby declares that readers who refer to this article do not constitute a lawyer-client relationship with our firm, therefore, Fumens Lawyers will not be liable for any losses caused as a result of relying on the information contained within this article.

Fumens Lawyers

Wendy Wang

Principal

Casey Chow

Associate

Hao Qian

Associate

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