Registering a trade mark in Australia is one of the most important steps in protecting your brand. But what happens when your desired trade mark is similar to a competitor’s existing mark?
In that situation, IP Australia may refuse your application unless you obtain formal consent from the other business.
In this article, our trade mark lawyers explain when consent is required, how to approach a competitor for permission, and how a well-drafted trade mark consent agreement can protect your business and avoid disputes.
Key Takeaways: What Business Owners Should Know
IP Australia can reject your trade mark if it is identical or deceptively similar to an existing registration.
You can often proceed by obtaining written consent from the other trade mark owner.
A trade mark consent (or coexistence) agreement defines how both businesses will use their marks without confusion.
Proceeding without consent can lead to trade mark opposition, infringement claims, and costly rebranding.
Engaging a experienced intellectual property lawyer helps ensure your consent agreement meets legal standards and protects your commercial interests.
Why Trade Mark Conflicts Occur
Trade marks identify the origin of goods and services. IP Australia will not register a mark that is “substantially identical or deceptively similar” to an existing trade mark covering related goods or services.
Conflicts usually occur when:
Businesses operate in similar industries or offer overlapping services.
Trade marks share common words, designs, or colours.
Consumers might reasonably assume the two brands are connected.
This safeguard prevents brand confusion and protects both businesses’ reputations.
To understand how common-law trade marks work and how they differ from registered marks, see our article on Common Law Trade Marks.
When You Need Consent from a Competitor
Consent becomes relevant when your application is blocked by an earlier registration under section 44 of the Trade Marks Act 1995 (Cth).
In practice, consent may be granted when:
Both parties operate in different markets or geographic regions.
The applicant has used the mark honestly and concurrently for some time.
The competitor agrees there is no real risk of consumer confusion.
A signed consent letter or coexistence agreement can be submitted to IP Australia to support your application.
What is a Trade Mark Consent (or Coexistence) Agreement?
A trade mark consent agreement is a formal contract that sets out the terms on which two parties agree to use and register similar marks.
An effective agreement should include:
A clear description of the trade marks and classes covered.
The territories or industries where each business will operate.
Restrictions on how each mark may be used to avoid confusion.
A statement granting consent for IP Australia registration.
Procedures for amending or withdrawing consent if circumstances change.
At Prosper Law, our lawyers ensure every agreement is both legally robust and commercially practical, protecting your rights while satisfying IP Australia’s evidentiary requirements.
Want to avoid pitfalls in the application process? Read our piece on Common Mistakes in Trade Mark Registration.
How to Request Consent from a Competitor
Approaching a competitor for consent requires professionalism and strategic communication.
The process generally involves:
Identify the Conflict: Review IP Australia’s database and pinpoint which existing mark is blocking your application.
Engage Respectfully: Contact the owner (or their lawyer) with a concise explanation of your business and intended use.
Negotiate Boundaries: Discuss possible limits on use, such as product classes, geography, or logo variation.
Formalise in Writing: Draft a legally binding consent or coexistence agreement.
Submit to IP Australia: Lodge the signed document with your application or response to examination.
Legal Tip: A measured, respectful approach often results in mutual agreement – and saves significant time and cost.
Risks of Proceeding Without Consent
Proceeding without consent can have serious legal and commercial consequences:
Trade mark opposition: The competitor can formally object during examination.
Infringement action: Use of a similar mark could amount to a breach of the Trade Marks Act.
Loss of reputation: Confusion may dilute your brand identity.
Forced rebranding: You may have to change your name, logo, or packaging.
Securing consent or adjusting your mark early can prevent these issues altogether.
Alternatives to Seeking Consent
If a competitor refuses consent, you may still proceed by:
Amending your mark to increase distinctiveness.
Limiting your goods or services to avoid overlap.
Relying on “honest concurrent use” if both marks have coexisted without confusion.
Seeking legal representation to negotiate or challenge the blocking mark.
Our IP lawyers can assess your situation and recommend the most effective strategy for registration.
Frequently Asked Questions
What is a trade mark consent agreement and why is it important?
It’s a written document where a trade mark owner allows another party to register a similar mark. It helps avoid opposition and establishes clear boundaries for coexistence.
Does IP Australia always accept consent agreements?
Usually, yes. However, IP Australia retains discretion to refuse registration if it believes confusion is still likely – even if both parties consent.
Can I use a similar business name without consent?
Not safely. Using a similar name can expose you to infringement claims or consumer law breaches under the Australian Consumer Law.
What if my competitor refuses to grant consent?
You can negotiate alternative terms, modify your mark, or rely on evidence of honest concurrent use under section 44(4) of the Trade Marks Act 1995 (Cth).
How can a trade mark lawyer help with competitor consent?
A lawyer can conduct searches, approach competitors strategically, draft compliant agreements, and manage correspondence with IP Australia to strengthen your application.
If you’re wondering when it’s essential to engage an experienced, take a look at our guide on What Is a Trade Mark Lawyer?
About the Author
Farrah Motley
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