This is a brief run-down on the use of letters of consent in Australia and New Zealand. It’s designed for foreign trade mark practitioners whose clients’ applications encounter citation objections.
The policy position
IP Australia and IPONZ both allow confusingly similar marks to coexist on the register where the owner of the senior mark consents. Even in so-called cases of “triple identity” (same marks, same goods, same territory of use) a letter of consent will overcome a citation objection. You could say that the deference afforded to consents in Australia and New Zealand reflects a preference for the parties’ private commercial interests over broader consumer protection considerations. But really, it just reflects the market reality. If the parties (who are best-placed to assess prospects of confusion) are cool to coexist, who is the Trade Marks Office to interfere?
The position Down Under stands in stark relief to those in place elsewhere including the United States and China. In the US, consents are given significant weight but are not guaranteed to overcome a citation. Also, the parties must go to lengths to detail the facts and circumstances that support their view that coexistence won’t lead to confusion. In China, following a few halcyon years, the TRAD abruptly changed its practice in 2021 and ceased accepting letters of consent in the vast majority of cases. If you want to have a shot at filing a letter of consent anyway, good luck. Oh – but don’t forget to spend time and money getting the document notarised, legalised and authenticated.
The easy way through a citation
Down Under, we love letters of consent. They’re powerful, in that they will overcome any citation. They are also straightforward to prepare. There are a few formality rules to follow, and some particular wording demanded by IP Australia, but otherwise the document simply needs to be signed by the consent-giver. No witnessing, no notarisation, no wet ink signature, no worries. Where an applicant is confident that the senior mark owner will consent (whether because of a prior agreement, non-use vulnerability or just because live-and-let-live is the preferred approach, a letter of consent is often the quickest and cheapest way through a citation.
Of course, consent requests may not be received with wide open arms where the senior mark is in use or enjoys a significant reputation. Where a consent request could lead your client into the jaws of an opposition or infringement action, consider other approaches first.
Here are some tips for attorneys wishing to prepare their own consent letters.
- Where an individual signs on behalf of a corporation, include the signatory’s title.
- For letters to be filed with IP Australia, use the magic words: “…consents to the use and registration in Australia of…”
- Don’t insert any conditions on use (e.g. “…consents to use of the mark provided it is rendered in yellow text on a black background)”.
- Put the letter on the senior mark owner’s letterhead.
Tips for the consent seeker
- Try to angle for a broadly-worded consent. That way, it’s more likely to be useful for future filings.
- Don’t mention the TM application number. You don’t have to. If the other side insists on mentioning the TM number, try to extend the consent to XYZ-formative marks.
- Be wary of exorbitant cost demands. It’s customary to pay about A$1000 (~US$750) towards the other party’s costs, but the contribution should be reasonable and proportionate to the relatively low costs of a non-use action.
Tips for the consent giver
- Tie the consent to the specific application or at least the specific trade mark.
- Find out what goods/services are affected by the objection and limit your consent to that.
- Try to recoup your costs, but don’t push too hard if you’re sitting on a vulnerable registration.
- If your registration is vulnerable but important, a no-challenge undertaking might be more valuable than payment of costs, so angle for that.