If you have filed a trade mark application with IP Australia and received an adverse examination report, it can be difficult to determine what the issues are and what options are available for proceeding. This article will help explain the key components of an examination report, what to look out for, and outline your options to overcome the issues raised against your application.
Acceptance Deadline
Firstly, it is important to diarise the ‘acceptance deadline’. This is the date IP Australia requires you to overcome all the issues preventing acceptance of your application. You can find this deadline on the front page of the examination report. Note that the date is 15 months from the date of the examination report.
During this 15-month period, you may consider adopting various options to overcome the objections. However, if you cannot do so within that time, your application will lapse unless you request an extension.
Trade Mark Registration Requirements
There are two key requirements you must meet to achieve trade mark registration.
1. Conflict
Section 44 of the Trade Marks Act 1995 provides that your trade mark must not conflict with an existing trade mark on the IP Australia database. This applies to trade marks in the same or similar classes of goods/services.
2. Distinctiveness
Section 41 of Trade Marks Act 1995 requires your trade mark to be capable of distinguishing your goods/services from the goods/services of others.
Although the issues of conflict and distinctiveness are those most commonly raised by IP Australia examiners, other objections may include:
- formality issues;
- the trade mark is scandalous or contrary to law;
- the trade mark is likely to deceive or cause confusion in the marketplace; or
- the trade mark contains a domain name.
Understanding Issues An Examiner Raises
Suppose the examiner raises an issue under section 44 of the Trade Marks Act 1995. This means the examiner believes your trade mark closely resembles one or more earlier trade marks. This means it does not meet the ‘conflict’ requirement mentioned above. You can view the earlier trade marks by clicking on the hyperlink next to ‘Cited Trade Mark Numbers’. The examiner may also comment on which parts of the earlier trade mark closely resemble your mark. Additionally, they may include any other reasoning for objecting, such as a risk of consumer confusion.
Where the examiner raises an issue under section 41 of the Trade Marks Act 1995, they refer to the distinctiveness requirement mentioned above. The examiner may explain:
- their interpretation of the elements of your trade mark;
- their view of your trade mark as a whole; and
- why they believe it is not distinctive.
For example, the examiner may claim that your trade mark is descriptive of your goods/services. However, other traders need to use those words to describe similar goods/services.
Options for Proceeding
Although an examiner raises objections to your application, this may not mean you cannot achieve acceptance of your trade mark for registration. Depending on the trade mark and the issues raised, you may consider several options to overcome this. The main options include:
- filing submissions arguing against the examiner’s decision; or
- filing evidence of your use of the trade mark (note: the number of years of evidence required will depend on the particular objection raised).
Furthermore, where earlier trade marks are raised as a conflict with your application, consider:
- amending the goods/services claimed on your application to remove any overlap with the other trade marks;
- seeking consent from the owners of the trade marks; or
- filing a removal application against a cited mark, for non-use.
After reading through the report, if you would like further clarification on the examiner’s decision and the options available for proceeding, it may be helpful to call the examiner to discuss further. You can find the examiner’s contact information on the first page of the examination report.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Key Takeaways
If you received an adverse examination report from IP Australia in relation to your trade mark application, it is important to know what issues are raised and where you stand in terms of options to proceed. Given that the strategies set out above may require you to make legal arguments, compile evidence, reach out to relevant parties, and so on, we would highly recommend seeking legal assistance for guidance on the best approach forward.
If you need assistance with your adverse examination report, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
This will depend on several factors, including the issues raised, the trade mark itself and how long it has been used. Although there are no guarantees, it may be possible to overcome an objection if you are able to convince the examiner that the trade mark meets the requirements for registration.
In the IP Australia ‘Online Services’ portal, using the search bar, type in ‘Respond to an examiner’s report’. You’ll then need to enter the trade mark number, which will pull up the details of your application. Before filing a response, ensure that you have the relevant documents ready for submission, such as your response, supporting documents, and any amendment details (where applicable).
We appreciate your feedback – your submission has been successfully received.
