2 Ways to Ward Off Bad Faith Trademarking Opponents

Category: Trademark Information

Pop star and global cultural icon Madonna faced trademarking opposition for hergym business Hard Candy Fitness just six days after it was launched.

The opposing company was an Australian business operating under a similar name of Hard Candy (Australia) Pty Ltd. The Australian company filed a trademark application for the catchphrase ‘HARD CANDY’ in the same week that Madonna and her business partners announced their intention to launch a gym chain named after Madonna’s 11th studio album, Hard Candy.

In June of last year, IP Australia, the Australian government agency that oversees all trademark rights and legislation, ruled that the Australian company was acting in bad faith when filing for the ‘HARD CANDY’ trademark.

It was also found that the company owner, Antonio Dattilo, owned several domain names, trusts and Twitter handles that appeared to have a direct connection to Madonna when they did not.

Mr Dattilo had also named other businesses after international brands such as G-Star without obtaining permission from those brands.

The Australian Trade Marks Act was modified in 2006 to include ‘bad faith’ as a ground for registration opposition.

Bad faith trademarking is an increasingly common occurrence, particularly among Chinese markets.Recent reports have revealed an emerging pattern of Australian business owners discovering that a third party has filed a trademark application for the Chinese version of their product or service without obtaining permission.

While the renewed Australian trademark laws are there to protect you against bad faith registrations, there are two critical brand protection strategies that all business owners should undertake prior to launching their business:

  1. Complete trademark registration of all your products/services, logo, business name and brand. Correct registration means that IP Australia is likely to rule in favour of your case should you encounter bad faith trademarking opponents;
  2. Business owners should consider filing trademark applications not just in English, but also in foreign languages as ‘brand squatting’ has become a common practice in countries like China. Full coverage trademark registration means you can avoid having to take action against persons/entities and invest your precious time and energy instead on your business.

Call Pinnacle TMS’ Growth Protection Strategists/Trademark Specialists today on +61 2 9520 4366 or email info@pinnacletms.com.au to get started on protecting your business and brand today.