Trademark case studies
Lazarus Legal's recent trademark matters range from a TM Headstart filing to an opposition set down for hearing. Clients are not named, and industries and dates have been changed to protect confidentiality.
Taking a trademark opposition to hearing
Client. A Sydney day spa and beauty business trading under its brand since January 2023.
Challenge. A competitor that opened a similarly named business in late 2025 opposed registration. It argued the name was descriptive and not capable of distinguishing, and alleged bad faith. IP Australia had already accepted the application on evidence of use.
What we did. 5 steps
- Filed the client's evidence, documenting use of the brand from January 2023, before the priority date.
- Reviewed the opponent's evidence and identified its weak points: reliance on our client's own materials, a generic descriptive phrase, overseas material and material dated after the priority date.
- Advised the client to request the hearing itself rather than wait for the opponent, to move the matter to a decision.
- Briefed specialist trade mark counsel. On counsel's advice, requested an oral hearing by video so the client would not be left without a reply to the opponent's submissions.
- Kept a separate infringement and copyright complaint against the competitor apart from the opposition, with its own strategy.
Outcome. The opposition is set down for an oral hearing, with counsel briefed.
What this shows. Acceptance by IP Australia does not end the matter. In an opposition, evidence of Australian use dated before the priority date carries the weight. Overseas material and material dated after the priority date carry little.
Reviving a lapsed trademark application blocked under section 44
Client. An overseas outdoor equipment brand sold in Australia through a local distributor for years.
Challenge. An earlier registration for the same word, with a late-2019 priority date, blocked the application under section 44. After three examination reports, the application had lapsed. One sworn declaration was already on file. The evidence had a gap from early 2017 to late 2019, when stock sold from the distributor's warehouse rather than through new imports.
What we did. 5 steps
- Took over as agent and address for service, and obtained an extension of time that revived the application with a new acceptance deadline.
- Reviewed the full evidence set against the earlier declaration, so that new evidence would not contradict what was already filed.
- Advised on a primary strategy: a partial non-use removal application against the blocking registration, with acceptance of our client's application deferred while it ran.
- Kept a second route open: prior continuous use, which needs Australian use from before the blocking mark's priority date and continuity through to our client's filing date. We prepared an evidence checklist and questionnaire aimed at the gaps.
- Drafted declarations for two distributor witnesses covering the historical import, distribution and sale of the client's products.
Outcome. The application is back on foot, with a strategy letter, an evidence plan and witness declarations ready to sign.
What this shows. Once an application is revived, any new evidence must be consistent with what is already on file.
Resetting a stalled trademark portfolio with counsel's advice
Client. A retail software company supplying inventory and point-of-sale products to Australian homewares retailers.
Challenge. The client had filed a word mark and a logo mark in Classes 9, 35 and 42. Both met heavy citations, and the examiner rejected an honest concurrent use declaration filed before we were involved. The brand is a common laudatory word, and an earlier pair of applications had already failed in late 2021.
What we did. 6 steps
- Briefed specialist trade mark counsel on the full file, and turned the written advice into a plain-English summary and decision path.
- Recommended withdrawing the word mark rather than spending more on a mark with no inherent distinctiveness, and focusing on the logo mark.
- Proposed narrowing the logo mark to the client's actual field, and testing that limitation informally with the examiner before amending.
- Set out fallback options in order: coexistence agreements with cited owners, non-use removal against the cited marks, a better-targeted honest concurrent use case, and refiling as a last resort.
- Identified the evidence a renewed concurrent use claim would need: honesty tested at the priority date rather than at first use, Australian figures separated from global ones, use of the mark on the products themselves, and measurable marketing reach.
- Arranged a conference between the client's team and counsel.
Outcome. The client moved from a portfolio with no clear route to registration to a ranked plan that puts spend into the mark most likely to succeed.
What this shows. An honest concurrent use claim is judged on Australian evidence at the priority date. Global figures, and marketing claims that cannot be measured, will not carry it.
Dividing a trademark application to secure core protection
Client. A Sydney design and marketing studio trading since the late 1990s.
Challenge. The studio's logo application covered printed promotional material and design services as well as marketing and advertising services. IP Australia cited an earlier registration for a similar-sounding mark owned by a business in a different field. The citation risked holding up protection for the studio's core design work.
What we did. 4 steps
- Divided the application in two. The parent application, covering printed promotional material and core design services in Classes 16 and 42, proceeded to registration.
- Kept the contested services, mainly marketing and advertising, in a separate child application, so the objection could be dealt with without risk to the registered rights.
- Advised on three routes for the child application: prior continuous use from before the cited mark's early-2022 filing date, a letter of consent from the cited owner, or deleting Class 42 and narrowing Class 35.
- Set out the commercial risk of the consent route, since an approach can draw the cited owner's attention, and offered a no-fee deferment to buy time for evidence gathering.
Outcome. The studio holds a registered logo mark for its core services. The child application is a contained, optional decision.
What this shows. A divisional application lets the uncontested part of a brand register now, so one objection does not hold up everything.
Using TM Headstart to see the objection before filing in full
Client. A Sydney private wealth and business advisory firm protecting its name for advisory, financial and educational services.
Challenge. The firm's name is built on initials, a crowded space on the register. The client wanted protection in Classes 35, 36 and 41 without paying for a full application blind.
What we did. 5 steps
- Filed through IP Australia's TM Headstart service, which gave a preliminary assessment within days.
- Reviewed the adverse Headstart report, which flagged three earlier marks under section 44, and explained that it was a preliminary view, not formal examination.
- Recommended converting to a full application within the quoted fee, which secured the filing date against later filers.
- Analysed the formal examination report when it arrived, and set out the options: narrowing Classes 35 and 36, written submissions on the different commercial fields, a divisional application for unaffected services, and deleting classes as a last resort.
- Diarised the matter for review at the time the client preferred.
Outcome. The client holds an early priority date, knows exactly what the examiner objects to, and has more than a year to choose a response.
What this shows. TM Headstart shows the likely objections before you pay the full fee. The filing date is only set when you convert, so converting promptly protects your position against later filers.
Testing acquired distinctiveness, and a straight answer on prospects
Client. An Australian footwear and accessories brand with a registered logo, seeking to register its name as a plain word mark.
Challenge. The word mark faced a distinctiveness objection under section 41. Most of its use of the name had been inside the logo. Registration depended on proving the name had come to identify the brand through use, and a hearing was listed.
What we did. 5 steps
- Prepared a declaration of acquired distinctiveness with a merged, paginated exhibit bundle.
- Reported to the client on the further evidence still needed.
- Briefed specialist trade mark counsel and ran a conference with the client to test the evidence before committing to hearing costs.
- Gave our own view on prospects when the client asked. We agreed with counsel that the hearing was about a 50/50 proposition.
- Confirmed that the registered logo was unaffected, and set out a path back: build evidence of the name used on its own, then consider a fresh filing.
Outcome. The client chose to let the word mark application lapse rather than fund a hearing at even odds. Its registered logo stays in place, and we now monitor the register for conflicting filings.
What this shows. A name used mostly inside a logo builds little distinctiveness on its own. If you want the plain word registered later, use it on its own now.
