According to section 17 of the Trade Marks Act 1995 (Cth) a trademark is defined as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” Accordingly, a trademark’s registrability lies in its capacity to distinguish one trader’s goods and/or services from those of other traders. When an application to register a trademark is rejected on the basis that the mark is not capable of distinguishing a trader’s goods and/or services, there are several courses of action that can be adopted in an effort to overcome the objection.

Submissions in rebuttal

If you are in possession of information which shows that your mark is capable of distinguishing your goods and/or services and this information was not available to the trademarks examiner at the time of assessment, you (or your agent) may write to IP Australia and use the information to rebut the grounds for rejection. Whether or not the information provided will be sufficient in overcoming the objection will ultimately depend upon the particular facts of the case.

Amending the goods and/or services description

In a multiclass application, if the ground of rejection is premised on the trademark’s inability to distinguish your goods and/or services under particular classes or descriptors within those classes, the objection can be overcome by deleting the offending parts of the specification.

Providing evidence of use

In circumstances where amendments and submissions in rebuttal are not enough to overcome an objection, the owner of the trade mark can provide formal evidence of use in an effort to obtain registration. The evidence provided will need to be set out in declaratory form and at the very least should outline:

  1. when the trade mark was first used and the period of use;
  2. the goods and/or services in respect of which the mark is being used;
  3. annual turnover figures;
  4. advertising expenditure associated with the use of the mark; and
  5. examples of advertising promoting the mark.

If the trademark is always being used alongside another mark or marks, the evidence of use must demonstrate that the mark in question is capable of distinguishing the applicant’s goods and/or services on its own. If the mark is always used descriptively, it is unlikely to be accepted for registration.

Certain trademarks are deemed to have no inherent adaptation to distinguish a trader’s goods and/or services. Per section 41 Note 1 of the Trade Marks Act 1995 (Cth), a mark that merely describes “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services or the time of production” has no capacity to distinguish.

When tendering evidence of use in relation to marks that are not capable of distinguishing, the applicant must provide:

  1. evidence of use in Australia;
  2. evidence of use before the filing date of the application; and
  3. evidence that consumers associate the applicant’s trademark exclusively with the applicant’s goods and/or services and with no other trader’s goods and/or services.

Conclusion

Overcoming an objection to trademark registrability can be complex and time consuming. In terms of submitting formal evidence of use, there are certain form requirements that must be met. Why not contact LegalVision’s friendly team of Intellectual Property lawyers on 1300 544 755 to see how we can help with your trademark queries. We would be happy to assist and answer any queries that you may have.

Vanja Simic

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