Applying for a trade mark is an important way to protect your brand name or logo. It also prevents other businesses from using a similar brand. If you have chosen a trade mark that is too similar to another mark, it may be rejected by IP Australia. If your trade mark is simply a description of your product or service, IP Australia will likely object to it on the basis that it is not distinguishable in the marketplace. Here, you may be able to overcome this objection. This article will outline what evidence you will need to provide to overcome a trade mark objection.
What Does the Objection Mean?
If IP Australia has objected to your trade mark on the basis that it was not distinctive enough, this means that your trade mark:
- was merely a description of your goods or services;
- contains a common surname or geographic name; or
- is a common phrase within your industry.
The objection can mean that IP Australia has decided either that your trade mark:
- is not capable of distinguishing your goods or services from the goods or services of other persons; or
- has limited ability to distinguish your goods or services from the goods or services of other persons.
The adverse examination report from IP Australia will indicate which objection was raised against your trade mark. Below are examples of trade marks that are acceptable and not acceptable to IP Australia:
| Trade Mark | Is it Distinctive? |
| DARWIN FUNERAL SERVICES
Funeral services |
Not capable of distinguishing |
| GO FOAM FREE!
Plastic Food Packaging |
Not capable of distinguishing |
| UNCANNED
Food production and the provision of information on food |
Capable of distinguishing |
| THINK DIFFERENT
Watch and mobile phone products |
Capable of distinguishing |
Evidence of Use
Depending on the strength of the objection on your adverse report, a rule of thumb is to provide at least two years of evidence to prove that your mark has become a badge of origin for your business. If the rejection is stronger, you will need to show over five years of evidence.
For example, if your brand name was ‘SYDNEY ELECTRICAL SERVICES’ you would likely need over 20 years of evidence to provide the brand name has become a badge of origin for your services. This is because the name could be used to identify any other electrical company in Sydney.
To prove that your brand name has become a badge of origin for your business, you will need to show that the brand name you have chosen has become synonymous with your business. You will also need to show that consumers recognise your brand and know that it belongs to your business without confusion.
Evidence Checklist
Below is a checklist that you can use when trying to compile evidence of your use of the trade mark.
| Evidence of Use Type | Evidence to Provide |
| History of Trade Mark Use | Date of first use of the trade mark. |
| Documentation of where the mark has been used. | |
| The goods or services sold in conjunction with the trade mark. | |
| Examples of how the trade mark has been used to sell your goods or services e.g. packaging, website and advertising. | |
| Annual turnover and advertising figures in connection with your trade mark. | |
| Additional information and photographic evidence on how the trade mark has been used. | |
| Additional Evidence | Market share of the trade mark. |
| The cost of the goods or services. | |
| Advertising information e.g. Trade shows, industry events, social media advertising, Google SEO spend, print and radio. | |
| Online or print publications mentioning the trade mark. | |
| Information on the key customer base. | |
| Information on how the goods or services are sold e.g. Do you engage a third party? | |
| Screenshots of the use of the trade mark on the internet. | |
| Declarations from highly regarded people within the industry. | |
| Consumer surveys and questionnaires. | |
| Evidence of Intended Use | Declaration of intended use. |
| Future plans for the use of the trade mark in connection with the goods and services. | |
| Future projected turnover and advertising spend. | |
| Costs of future projects. |
Chances of Successfully Overcoming the Objection
Your chances of successfully overcoming the objection will depend on:
- providing evidence that satisfies the formality requirements;
- how well you have addressed all the relevant information that the examiner needs to know;
- how substantial and relevant your evidence of trade mark use is; and
- the strength of the distinctiveness objection raised against your trade mark.
If you do not think you are able to prove these elements immediately. You may like to consider applying for a trade mark when you can prove these elements. Alternatively, you may consider applying to register a stylised logo version of your trade mark, which may satisfy the examiner’s requirements.
Key Takeaways
If your trade mark has been rejected due to it not being distinctive enough, you are able to challenge the rejection. This will require you gathering a lot of evidence to prove that the trade mark has been distinguishing your brand for some time. If you have received an adverse examination report from IP Australia and are unsure how to proceed, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.
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