IP SERVICE INTERNATIONAL successful in requesting revocation of 'Bio Pack Australia' Trade Mark

IP SERVICE INTERNATIONAL was successful in challenging the acceptance of the Bio Pack Australia (+Device) trade mark application no. 2201139, prompting the Registrar to reconsider acceptance due to a conflict with our client's earlier registrations.

Our client sought to prevent registration of a confusingly similar trade mark before formal opposition proceedings commenced, by leveraging the Registrar’s discretionary powers for revocation under the Trade Marks Act 1995 (Cth).

Key Issues

A third party had obtained acceptance of the trade mark Bio Pack Australia (+Device) in Class 17 for packaging goods. Our client held a long-standing portfolio of conflicting earlier trade marks in Australia, registered across multiple classes covering packaging and related goods, with priority dating back to 2009. Following acceptance of the later application, our client engaged us to assess whether the mark should ever have been accepted in the first place.

We prepared and filed a request for revocation of acceptance with IP Australia, submitting that the applied-for mark was substantially identical or deceptively similar to our client’s earlier registrations, and that the goods were the same or closely related. The submission addressed visual, phonetic and conceptual similarity, including the descriptive nature of the geographical term “Australia”, as well as overlap in trade channels and consumers for packaging goods made of rubber, paper and plastics.

Findings

IP Australia confirmed that, as a result of our request, the acceptance of the application would be revoked by the Registrar, requiring the applicant to respond if they wished to maintain acceptance.

Outcome

The Registrar's decision to revoke acceptance became final and the application lapsed. Our early intervention effectively disrupted the registration pathway of the applied-for mark and prevented the need for formal opposition proceedings.

This outcome highlights the value of early, tactical enforcement of trade mark rights. By acting promptly at the acceptance stage, our client was able to apply regulatory pressure, preserve its brand position, and avoid the time and cost associated with a full opposition.

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