Responding to an Adverse Report

Summarise with: ChatGPT Perplexity Microsoft Copilot

---

Table of Contents

• Reasons for an Adverse Report
• How to Respond to an Adverse Report
• Key Takeaways
• Frequently Asked Questions

When you file a trade mark application, an examiner from IP Australia will assess whether your trade mark is fit for registration. If the examiner does not accept your application for trade mark registration, you will receive an adverse examination report detailing the reasons for objecting to your application. Some of the most common grounds for objection are that your trade mark lacks distinctiveness, has overly generic terms or is too similar to another registered trade mark or pending trade mark application. This article will discuss why your trade mark application may be rejected and how you can rectify the problems identified in the adverse examination report.

Reasons for an Adverse Report

Lack of Distinctiveness

To be eligible for trade mark registration, your trade mark must be capable of distinguishing your goods and/or services in the marketplace. The more unique your trade mark is, the greater the chance that your trade mark is distinct and memorable to consumers. It will also be easier to allege trade mark infringement and seek legal remedies if a competitor uses the same or similar trade mark to yours.

When assessing a trade mark’s distinctiveness, examiners will consider factors like its inherent qualities, how it is used, and evidence that consumers recognise it as a trade mark. Thus, a trade mark with “strong” distinctiveness might feature invented words or words that bear no connection to your goods and/or services. For example:

1. “Polaroid” is an invented word that has now become a distinct and recognisable trade mark.
2. “Apple” is a word that was originally unrelated to electronic goods but is now related to the famous technology brand.

Both trade marks are memorable and considered ‘inherently distinctive’.

At times, a trade mark, despite not being distinctive, may have adopted a secondary meaning through extensive use and promotion. As a result of this, the brand’s recognition has increased. Provided you can prove that consumers associate the trade mark with your product or service, despite its non-distinctiveness, it may still be possible to achieve registration.

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

Download Now

Generic Terms

An examiner may believe your trade mark contains a generic word that traders should be able to use freely. In this case, they will usually issue an adverse report on the same grounds as a non-distinctiveness objection. Generic terms describe the product or services that your trade mark covers. For example, an application for “Computer” will be rejected where the goods you offer under this trade mark are computers or electronic devices, as it is simply their common name. IP Australia will not unfairly prevent other traders from being able to describe their goods and services properly.

However, it is possible to include generic terms within your trade mark as long as other distinctive elements accompany them to distinguish it as a whole. For example, if you run a software development business, you would be unable to register the trade mark “Software”. Still, you may consider including completely unrelated, invented or unique terms in your trade mark to make it memorable in the minds of consumers, for example “Xylophone Software”.

Substantially Identical or Deceptively Similar Trade Marks

You will likely receive an adverse examination report if you attempt to register a similar or identical trade mark to another registered or pending trade mark, covering the same or similar goods and services. The purpose of trade mark protection is to prevent other traders from being able to use identical or deceptively similar trade marks to your own.

Examiners take many different considerations into account when determining the likelihood of confusion. For example, the examiner will compare your trade marks. They will assess based on the degree of similarity between the trade marks themselves and the goods or services they pertain to.

The examiner may also consider any evidence that the marks have already co-existed in the same marketplace without having caused any consumer confusion. An example of consumer confusion is a consumer mistakenly purchasing one seller’s goods or services in the belief they are from another seller. If two similar marks have existed concurrently for a period of time without documented incidents of consumer confusion, this may be evidence that the marks are capable of being distinguished.

How to Respond to an Adverse Report

An adverse report does not necessarily signal the end of the road for your trade mark application. Adverse examination reports simply indicate why your application cannot be accepted in its current state. Then, you are provided with 15 months to address these issues and remedy them for your application to proceed to acceptance. During this period, you have the opportunity to overcome the objections raised through options such as submissions, amendments or evidence. The most appropriate response will depend upon the reason for the refusal, how long you have been using your trade mark and other considerations. For example, depending on the issues raised, you may take steps to:

• filing legal submissions or arguments arguing against the examiner’s objections;
• amend the goods and services you claim in your application;
• submit evidence of your use of your trade mark; or
• seek consent from other conflicting trade mark owners.

Responding effectively and persuasively to an adverse report can be complex. We recommend hiring a trademark lawyer at this stage to help you overcome objections.

Key Takeaways

Your trade mark application may receive an adverse report when a trade mark examiner decides there are obstacles to your application that you must overcome before IP Australia accepts it. The most common reasons are that your trade mark:

• lacks distinctiveness;
• contains overly generic terms; or
• is highly similar or identical to an existing trade mark for the same goods and services.

When responding to an adverse report, you can take several paths, including engaging with IP Australia or contacting any conflicting trademark owners. 

If you have received an adverse report and need assistance with responding, 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