Have you received an objection to your trade mark application from IP Australia? Deciding whether to appeal the objection is a business decision and it’s important to understand the grounds of objection before spending any further time and resources submitting another application.

A trade marks lawyer can tailor their advice to suit your business’ circumstances. However, it’s difficult to answer specific questions including:

  • How long does it take to appeal an objection and register my trade mark?
  • Can I be guaranteed success?
  • How much time, effort and money do I need to spend?

No one knows, and anything can happen during the trade mark prosecution process. If you don’t have a trade marks lawyer advising you, we give you some quick tips to determine whether you can overcome the objections the trade marks office raised.

1. Are the Objections About Formality Requirements?

If the objections are about formality requirements, make sure you read the examination report carefully. Typically, it sets out your options and these objections are easier to resolve. Although there are circumstances where a mistake in your application can be detrimental such as submitting the incorrect trade mark or forgetting to claim some of your most important goods and services, these rarely occur. If this does happen, nothing precludes you from submitting another application. You will have to pay the necessary fees again, but this is a more reasonable amount when considering the substantial cost involved when engaging in a trade mark dispute. 

2. Is Your Trade Mark Too Generic? How Long Have You Been Using it For?

If IP Australia objects to your trade mark because it is not distinctive, you will need to think about how generic is your trade mark and how long have you been using it for. If the objection raised is under section 41(3) or 41(6) of the Trade Marks Act 1995 and if you have not used the trade mark,  it is probably best to go back to the drawing board and brainstorm some new ideas. If the objection raised is a distinctiveness objection and you can demonstrate your use of the trade mark in the marketplace, you should seek advice from a trade marks specialist. Your case might not be hopeless, and a trade mark lawyer can help you determine your chances of success.

3. Is Your Trade Mark Identical of Too Similar to Another Trade Mark on the Register?

If IP Australia objects because your trade mark is identical or too similar to another trade mark on the register, your chances of success depend on several factors including:

  • How many objections were raised against your application? 
  • How similar is your trade mark to others on the register? 
  • How close are your goods or services to the goods or services specified in other trade mark registrations? 
  • How have you used your trade mark?

Importantly, each registered trade mark considered too similar is a different section 44 objection. For example, if there are two trade marks considered too similar to yours, your application would have to overcome two different Section 44 objections. 

If you haven’t used or invested in your trade mark, it may be cheaper and more efficient to submit another application and apply for another trade mark that will pass through examination without any issues.

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If you have used or have in any way invested in your trade mark, make sure you speak with a trade mark professional before giving up. Each trade mark application is different and depending on your business’ circumstances, overcoming the objections raised doesn’t need to be a difficult, expensive and time-consuming process.

Questions about overcoming an objection to your trade mark or resubmitting your application? Ask us on 1300 544 755.

Raya Barcelon

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