Letter of consent

Your company may be able to overcome an examiner’s objection to your company’s trade mark application by providing a letter of consent.

If the examiner says your trade mark is too similar to one owned by someone else, but you get the other company’s consent, the examiner will withdraw their refusal. But is this always the best idea?

Before asking for a letter of consent, think over these factors:

• Will your customers be confused by your trade mark and potentially take their business to the other company?

• How likely is it you will get a letter of consent?

• Are other options to deal with the examiner’s objections more certain, cheaper, easier or faster?

• What are the parties competing interests, and what are the competing interests in wording a good letter of consent?

Confusion

Spending time and money to build a brand, but then having customers go to another company because they were confused, is bad for three reasons. Firstly, it’s wasted marketing. Secondly, lost profits. Thirdly, potential damage to your reputation if the other company upsets the customer.

So, could the two trade marks / businesses co-exist without confusing customers? What happens if either company decides to expand or pivot in a different direction in the future? Would a complex co-existence agreement be needed? What happens if a competitor of yours bought the other company?

Are you better off choosing a different trade mark instead?

Will you get a letter of consent?

The other company is going to think about confusion too. They are not likely to want to ‘share’ their trade mark just because you ask. Even if it won’t hurt them (because you plan to target a different industry or market area), why take the risk?

Getting a letter of consent is easiest if the other trade mark is not being used at all. Non-use removal actions are used to attack trade marks that are not in use. A company often provides consent so that you don’t attack their mark, to avoid losing their trade mark registration. Also, a trade mark not in current use is less valuable than if it were on an existing product line.

If the other trade mark is being used, but only on a small range of products, it is often still easy to get consent – removal for the other goods is still an attack and it will cost them to have to defend.

Factoring in how likely obtaining a letter of consent is, before alerting the other company to what you are doing, is important. Not getting consent might mean they oppose registration of your trade mark even though you may have convinced the examiner to allow it another way.

How good are your other options?

Other options might be better. Arguing with the examiner can work. Deleting products you don’t really need from the application can work. Showing that you used your trade mark on the products before the other company applied for registration can work. Even showing use of your trade mark after they applied to register might work. Clearly, if your trade mark has been in use, just picking another one is not going to be a preferred option.

Where budget is not the main concern, the best options will be (1) arguing, (2) demonstrating use of your trade mark, before (3) asking for a letter of consent.

If budget is an issue, you don’t think the other company are using their trade mark, and you also have not used your trade mark, the cheapest option is just to attack with a non-use removal action (not to request a letter of consent first). If they do not defend it, the registration will be removed and the examiner’s objection overcome. Going straight to this option means it is not likely they would consent later on though!

In short, the main situation in which we suggest asking for a letter of consent as the first option will be where the other registration covers a broad range of goods but is only used on a small number of products, you have no or little use of your trade mark in Australia, arguing with the examiner doesn’t seem likely to succeed, you want the least expensive option that could realistically work, and you do not mind upsetting the other company.