Determine the Type of Objection
First, it is important to read the report carefully and find out what kind of objection your trade mark application is facing. There are two kinds of objections.
- Formality objections arise because there may be issues with the trade mark ownership or the classification of the goods and services claimed in the application.
- Substantive objections are those that are raised under the Trade Marks Act 1995 (Cth). The most common objections relate to a trade mark being too descriptive. Alternatively, it may be insufficiently distinctive of the goods and services claimed in the application. Additionally, an examiner may believe there are prior similar trade marks on the register that conflict with your application.
Options to Overcome Substantive Objections
It is important to remember that an examination report indicating that there are objections to your application does not necessarily mean that you cannot register your trade mark. Let us explore some options below for responding to the examination report.
Responding to a Section 41 Objection
As mentioned earlier, an examiner may object to your application on the basis of descriptiveness. This can be further detailed as to whether it is a highly stringent objection (known as a section 41(3) objection) or its lesser form (known as a section 41(4) objection).
There are two primary means of response to a section 41 objection:
- filing submissions: if you disagree with the examiner’s objections, you may respond by filing legal submissions to IP Australia. In your submission, you may explain why you think the decision is wrong and request the objection be reconsidered; or
- evidence of trade mark use: you may provide evidence of your use of your trade mark through a formal declaration. This entails collecting, organising and submitting evidence of your use of your trade mark, and requires you to establish substantial marketplace use and reputation of the trade mark.
Responding to a Section 44 Objection
An examiner may also object to your application based on prior filed trade marks, with a priority date earlier than your application. Here, you may overcome this objection by:
- filing submissions;
- filing evidence to demonstrate prior continuous or honest concurrent use;
- requesting consent from owners of the cited trade marks; or
- amending the goods/services of your trade mark application to overcome an objection concerning conflicts with trade marks filed before yours.
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Obtaining an Extension
There are no additional government fees involved with responding to an examination report. However, if you are approaching the deadline for providing a response, you can apply for an extension of time for acceptance (before the deadline). It is important to note that relevant government fees may apply when you apply for an extension of time from IP Australia.
Suppose you apply for an extension of time after the 15-month deadline has expired. In that case, you will need to provide a formal declaration to IP Australia and explain why an extension should be granted. Additionally, you must explain why you could not request the extension before the formal deadline.
Key Takeaways
When you receive an objection to your trade mark application, it is important not to give up. This is especially so if you have already significantly invested in your branding. If you need more information, your examiner’s phone number will be on the report.
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Frequently Asked Questions
You will receive this if your trade mark application does not initially meet IP Australia’s legislative requirements. If so, you will have 15 months to address the issues with your application. It is important to remember that an objection does not mean an outright rejection and you can explore various options.
If you are approaching the deadline for providing a response, you can apply for an extension of time for acceptance before the deadline. Fees may apply. If you apply for an extension of time after the 15 month deadline expires, you will need to provide a formal declaration to IP Australia and explain why an extension should be granted and why you were unable to request the extension before the formal deadline.
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