On 11 June 2019, Springboard 2000 Enterprises, Inc. (Springboard) applied for two trademark applications including the words DOLPHIN TANK, for seminars, educational programs and personal coaching services for developing women entrepreneurs in high growth businesses. Details of the trademark applications can be found here.
IP Australia examined the trademarks and accepted them in the latter half of 2019. However, IP Australia only assesses some of the legal requirements. If an error is made in accepting a trademark, anyone can oppose to stop the trademark from being registered. This is what Sony Pictures Television Inc. (Sony) did. You may recall a reality TV series called SHARK TANK – the SHARK TANK trademark is owned by Sony.
The opposition process went for almost three (3) years. Eventually, Sony succeeded in establishing that Springboard was not entitled to own or register the trademarks. On 7 July 2022, IP Australia refused registration of Springboard’s trademark application which they had previously accepted.
The legal costs for almost three years of opposition are astronomical. Also, the opponent (Sony) was awarded legal costs. This means that the trademark applicant (Springboard) also pays some of the opponent’s legal costs.
As a rough estimate provided by IP Australia, approximately 5% of accepted trademark applications are opposed.
So what lessons can be learnt from this?
Do not a make personally researched application to IP Australia because the financial repercussions could be devastating if a conflict arises and there is an Opposition or Court litigation.
Our recommendation is to always consider comprehensive research conducted by a professional Trademark Lawyer or Trademark Attorney BEFORE you adopt or apply for a trademark with IP Australia.
Businesses and start-ups generally conduct a 5-minute identical trademark search on the Australian Trademark Register.
In contrast, our Trademark Attorneys conduct a legal search with the following differences:
- Search seven (7) databases, not just one database like most businesses (and even IP Australia).
- Are trained on how to search the databases without missing important trademarks.
- Have experience and training on the Trademark Act and up to date Court requirements to properly work out if there is a trademark conflict.
- Search much more comprehensively, assessing phonetic and other deceptively similar trademarks, to ensure there is little or no litigation or opposition risk. This takes days, if not weeks, to conduct properly.
Does DOLPHIN TANK infringe SHARK TANK?
Would you have searched for this difference, and evaluated it before trading and applying? Remember that IP Australia decisions to accept a trademark can be reversed through opposition or the Courts.
To provide a more complete picture of whether there will be any legal concerns in trading with a trademark, our professionals also:
- Conduct research on the influence of common law trademark rights on your ownership of an IP Australia Registered Trademark.
- Assess all required Trademark ownership criteria under the Trademark Act 1995 (Cth).
Unless all trademark requirements are met, unfortunately your right to a trademark can be voided or terminated by third parties during Opposition, or even at Court.
Before you invest and trade with a brand, or if you have applied and IP Australia has objected to your trademark application, please contact our Trademark Lawyers today.
