Blocked trade marks: A case of crushing the little guy?

Andrew Bolis, owner and personal trainer at Metamorphic Studio in Clarinda, located in Melbourne’s industrial southeast, had a bright idea. So, protecting it with a trade mark seemed like a no-brainer. But things are never as simple as you expect. Tom Valcanis dives into Andrew’s epic trade mark journey.

As an athlete who takes bodies (especially his own lean frame) to their limits, Bolisset about researching compounds and nutrients one could absorb best during his routine ice baths – the kind that make us shiver just thinking about.

After months of preparation, queuing up manufacturers, sourcing materials, and designing packaging, he conducted a near-forensic search for his proposed brand name ThermoPure.

To the best of his knowledge, there was no other similar product or trademark out there. So, he filed for a trade mark with IP Australia and waited the statutory two months for objections to come in

Swooping in at the very last second was a German multinational saying they owned the trade mark. Andy, as he’s known to friends, couldn’t use it.

Understandably, Andy wasn’t happy.

“It was crushing,” he says, sitting barefoot and lotus-like in his studio. Mossy vines climb up the far side of the wall, and we’re surrounded by little totems of Zen; mandalas, Buddhas, incense in the air. Andy doesn’t seem the type to get disheartened easily.

“I’d poured all this work into researching the brand name, it fit just awesome. It’s a thermal compound without any artificial stimulants, all natural ingredients. As far as I could see, there wasn’t anything similar on the market.”

“Then, quite literally, at the very last moment of the open objection period, this big company comes in and says, ‘No, you can’t have it.’ It’s devastating for a small business owner like me, especially when I was so diligent. It feels like a big company trying to act tough, to intimidate the little guy.”

Trade mark trolling

Trade marks are a tricky business to navigate, especially for a layperson. It can often feel like big businesses are muscling out innovation and entrepreneurship. It’s an example of “trade mark trolling” – mega corporations with big pockets registering endless lists of trade marks with no intention of using them, just so others may not. Though it may look like “trolling,” there is a thorough process involved.

Paul Gordon, Intellectual Property Partner at Wallmans Lawyers in Adelaide, says there are two stages to successfully registering something. “The first step is assessment, in which IP Australia will review the application and assess the proposed trade mark.”

This assessment covers whether the good or service can be distinguished against other traders; that it doesn’t infringe on another trade mark; and isn’t the same as another well-known trademark trading in a similar class of goods or services.

“Once that has happened, the trade mark is advertised in an online journal for two months, during which anyone can object,” Paul says. “The general bases of objecting to a mark are the same as on examination, or that the person making the application is not the true owner of that brand. The general reason a company objects is that they are, in fact, the proper owner of the brand.

“That being said, it can be used by companies with significant resources to scare others out of the market, making an unmeritorious claim knowing that the entrepreneur won’t have the funds to fight the opposition. I can’t say that is happening here, but it certainly can happen.

“The idea isn’t to stifle innovation, but realistically to protect consumers, trying to stop someone claiming a brand when they don’t actually own it. We do see it relatively frequently, but in terms of a ratio between applications and oppositions, I don’t think it’s overly common.”

Protecting your brand

According to IP Australia, over two thirds (69.3 per cent) of Australia-based applications for trade marks do end up being registered.

As for Andy, the deadline for the objection to be formalised has passed and the multinational filed a response at the eleventh hour.

“It’s so painful,” he says. “I wish it was all said and done with. If the objection goes through, it’s back to square one with the trademark. It’s not all over, it’s just frustrating.”

Paul has some very lawyer-like advice if you find yourself in a similar situation: “If you do have an opposition filed against you, I hate to say it, but speak to a lawyer.

“There might be ways to manage the opposition in a ‘win-win’ with the opposing party, or to knock it out quickly. That said, it all comes down to the particular facts of the particular case.”

All we can say now is best of luck to Andy – he’s probably going to need it.

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