Trade mark squatting, where a person registers a trade mark merely to sell for a profit at a later time, is a big issue in China and a headache for many brand owners.
It doesn’t occur as frequently in Australia largely due to our first to use regime which differs from China’s first to file system. But in the Trade Marks Office’s recent decision in StockX LLC v GEO Industries[1], the trade mark filing activities of GEO were put under the microscope in an opposition to its application for registration of the trade mark StockX.
StockX is a popular live marketplace which operates globally with sellers placing asks and buyers placing bids for products such as trading cards, apparel, fashion accessories and electronics. It’s said to operate in the same way as the stock market. Not surprisingly given the platform’s popularity, its operator, StockX LLC owns an Australian trade mark registration for the mark:
However, back in October 2019, GEO filed an Australian trade mark application in classes 9 and 35 for various software items and retailing of fashion goods via internet websites for the mark StockX. It’s unknown what was behind that decision, but it’s doubtful that GEO was shocked when StockX LLC opposed its registration.
StockX LLC’s opposition succeded on the basis of s 62A of the Trade Marks Act which provides that a trade mark application may be opposed on the ground that it was made in bad faith.
StockX LLC’s evidence in the opposition was that GEO had filed 12 Australian trade mark applications including for the marks TESLA, UBER, Apple Watch, ALEXA CHUNG and H&M, which the Hearing Officer accepted were well-known marks.
GEO did not appear at the hearing nor file any submissions so it could not refute the claims of bad faith. In finding for StockX LLC, the Hearing Officer stated:
“… the Applicant’s actions cast significant doubt on the bona fides of its intentions in filing the application for the Trade Mark. Given the Applicant’s history of applying for trade marks which it arguably does not own, or apparently have permission to use, I am satisfied that the Applicant’s conduct in filing the application for the Trade Mark was exploitative, designed to acquire a springboard or advantage, and would be regarded as in bad faith by persons adopting proper standards.”
It’s unclear from the decision how StockX LLC was alerted to GEO’s Australian trade mark application. However, like many large multinationals, it may have formal trade mark watching services in place on trade mark registers around the world. This allows companies to quickly identify any third party applications for their trade marks or which they consider are too similar, and take action such as seeking voluntary withdrawal of the application or filing an opposition. In some cases, the trade mark applicant might also be using the mark and swift action can be taken to stamp out infringement.
It’s not just well-known brands that can benefit from watching services and broader market surveillance. All trade mark owners should keep an eye on trade mark registers for bad faith filings or applications for similar marks and on the marketplace for trade mark misuse. Trade mark watching is a service that we have a lot of experience and expertise in, so if you’re considering your options to ward off bad faith filings and misuse we’d love to hear from you.
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[1] StockX LLC v GEO Industries Pty Ltd [2023] ATMO 129