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The benefits of registering a trade mark cannot be overstated. By successfully registering a trade mark, the owner is granted the exclusive right to use the design and license/assign the mark to others. Furthermore, a trade mark is a valuable commodity in that it can grow in value and be sold for a profit, thus adding to the asset pool of the business.

The most common reasons a trade mark will be refused registration are:

  1. that the trade mark is identical or similar to an earlier registered or pending mark; or
  2. that the trade mark does not and will not distinguish the applicant’s goods and/or services from those of other traders.

If a trade mark is rejected on the basis that it is identical or similar to an earlier mark, there are several courses of action that an applicant can take in an effort to overcome the grounds for rejection.

Amending the goods and/or services description

Trade mark applications are filed under classes of goods and/or services. Each class contains hundreds of specifications, some of which are very broad and some of which are very specific. If a trade mark is rejected on the basis that it is similar to another mark which covers similar goods/services, it is possible to overcome the objection by deleting or excluding the infringing specification.

Negotiating with the owner of the conflicting trade mark

In circumstances where it is not practicable to amend the goods/services specification of your trade mark, it may be worthwhile entering into negotiations with the owner of the conflicting mark and asking them to amend their specification.

Cancellation/Assignment of the conflicting trade mark

Similarly, the applicant may ask the owner of the prior registered trade mark to voluntarily cancel the mark or assign it to the applicant.

Filing evidence of honest concurrent use and or prior use

In circumstances where the owner of the prior registered trade mark is not willing to negotiate or alter their mark/list of goods and services, the applicant can overcome the ground of rejection if they can established that they have used their mark prior to the registration of the conflicting mark or have used it honestly and concurrently since then. Towards this end, formal evidence of use will need to be filed in declaratory form with IP Australia.

Removal of the conflicting mark

If the applicant is of the opinion that the prior conflicting trade mark has not been used for the past three years, they can apply to IP Australia to have the mark removed from the registrar on the basis of “non-use”. Once a non-use application has been submitted, the onus will fall on the owner of the registered mark to show that they have been using the mark.

Conclusion

Would you like to know more about trade marks, the process of trade marking or how to go about overcoming an objection? Our team of experienced LegalVision lawyers would be happy to assist you with any queries that you may have. Contact our IP team today to see how we can help you with registering a trade mark.

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