A distinctiveness objection under section 41 of the Trade Marks Act is raised against trade marks that:

  • Have some inherent capacity to distinguish but are not prima facie capable of distinguishing the goods or services under s41(4) or s41(5) of the Trade Marks Act; and
  • Trade marks that do not have inherent adaptation to distinguish under s41(3) or s41(6) of the Trade Marks Act.

The distinction between these two kinds of objections is important because evidence of use provided to overcome a section 41(4) or 41(5) objection will be assessed differently from the evidence of use supplied to overcome a section 41(3) or 41(6) objection.

The adverse examination report from IP Australia will indicate which section 41 objection was raised against your trade mark. We set out below how much evidence you need to provide as well as your chances of successfully overcoming the objection.

Evidence of Use Supplied Under s41(4) or s41(5)

If according to the examiner, the objection raised against your trade mark is under section 41(4) or 41(5) of the Trade Marks Act, this means that the examiner finds your trade mark to be capable of distinguishing to some extent.

If you are trying to overcome a section 41(4) or 41(5) distinctiveness objection, your evidence of trade mark use must prove that your trade mark does or will distinguish your good or services in the marketplace. In providing evidence of use under section 41(4) or s41(5), the examiner can take into consideration evidence of your intended use, future use and use of the trade mark after the day of lodgement.

Evidence of Use Supplied Under s41(3) or s41(6)

If your application faces a section 41(3) or 41(6) objection, then the examiner considers that your trade mark is not inherently capable of distinguishing your goods and services.

It is usually very difficult to overcome a section 41(3) or 41(6) objection. In this case, you must establish through your evidence that at the date of filing (the day you lodged your application), the trade mark does distinguish the goods or service. To prove this, you must have evidence demonstrating that you have been using your trade mark substantially before your application. In this case, substantially will mean more than a couple of years and to the extent that most consumers will recognise your trade mark as a badge of origin.

How Much Evidence do I Need to Provide?

If you receive a section 41(4) or section 41(5) objection, the amount of evidence you need to provide to prove successfully that your trade mark does or will eventually distinguish your goods or services depends on the strength of the objection.

A trade mark’s capacity to distinguish is assessed using a spectrum. On one end of the spectrum are trade marks considered inherently capable of distinguishing. These are trade marks that pass through examination without section 41 objections raised against them. On the other end of the spectrum are trade marks with no capacity to distinguish. These are the ones that receive section 41(3) and section 41(6) objections. Somewhere in the middle are trade marks that are to some extent capable of distinguishing. The amount of evidence required will depend on where your trade mark falls in this hypothetical spectrum. However, if you are providing evidence without the assistance of a trade mark lawyer or attorney, it is best to provide as much evidence as you can.

Chances of Successfully Overcoming the Objection

Your chances of successfully overcoming a section 41 objection will depend on the following:

  • Providing evidence that satisfies the formality requirements;
  • How well you have addressed all the relevant information that the examiner needs to make a decision;
  • 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 have received an adverse examination report from IP Australia and are unsure how to proceed or what evidence of use to provide, let our trade mark team know on 1300 544 755.

Raya Barcelon

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