An objection to a trade mark application occurs when a trade mark examiner considers there are obstacles to your application. You need to address these before IP Australia, Australia’s trade mark authority, can accept your trade mark for registration. However, do not worry too much if you have received an objection. It is very common and sometimes can be easily remedied. This article will help you understand some of the most common objections that a trade mark application is likely to face.
1. Formality Issues
Your application must meet certain formality requirements to be registered. This includes specifying the correct owner of your trade mark. Trade marks, like all assets, can only be legally owned by a person or legal entity. This means you cannot name your business as the owner, but you can name yourself or your company that runs your business.
You also should not make applications in the names of a partnership or a trust, as these are not separate legal entities. Instead, you should make your application in the names of each partner jointly or in the name of the trustee of the trust.
2. Inherent Registrability and Distinctiveness
A core requirement to registering a trade mark is the ability of your trade mark to distinguish your goods and services from others. Therefore, your trade mark should not solely consist of generic or descriptive terminology or signs. This is because generic wording should be available for all traders to freely use.
For example, the name ‘Business Brokers’ would likely face an objection based on non-distinctiveness if the core offering of your business is business brokerage services. Other traders within this industry should be able to use these words without risk of infringing upon your registered trade mark.
Continue reading this article below the form3. Conflict
Your trade mark application will face an objection if you apply to register a trade mark that is:
- substantially identical or deceptively similar to another trade mark;
- that trade mark is either pending or registered; and
- that trade mark is in relation to the same kinds of goods and services that you offer
If you receive an objection on this basis, but you have been using your trade mark for quite some time, you may be able to overcome this by proving your use of your trade mark. We recommend seeking the advice of a trade marks lawyer to help you prepare this evidence, which can be quite a demanding task. The likelihood of overcoming a conflict can depend on how similar your trade marks are, whether the conflicting trade mark is currently in use, and how your trade marks are used.
4. Specification Issue
Sometimes, a trade mark office may object to how you have described your goods and services in your application. Each trade mark office has its own classification requirements, and you should make sure you are complying with the relevant guidelines within each country.
For example, it is possible to include a broad claim to ‘computer software’ in your application in Australia. However, in countries such as New Zealand, the USA and Canada, further detail is required concerning the nature and purpose of this software, e.g. ‘computer software for collecting and analysing data in the medical field’. This type of objection is usually easily addressed by making an appropriate amendment.
5. Scandalous or Contrary to Law
If your trade mark contains a word or image that is considered offensive, it may be considered scandalous and incapable of registration. This includes trade marks that contain:
- obscene or coarse language;
- profanity;
- words or images appearing to condone racism, terrorism or violence;
- elements of personal abuse;
- abuse of national flags;
- religious intolerance/abuse; or
- distorted images of well-known people.
A scandalous objection may also be raised where your trade mark contains Indigenous Knowledge subject matter that:
- has religious, spiritual or cultural significance;
- is sacred; or
- is derogatory.
Key Takeaways
If you have received an objection to your trade mark application, do not despair. Many applications receive an initial objection, but you can often overcome them so IP Australia can register your trade mark. Whether you incorrectly identify your family trust as the owner of your trade mark on your application form, or you have inadequately described your goods and services, we recommend speaking to a trade mark lawyer to help you rectify these common objections. Even better, obtain the help of a trade marks lawyer to help you file your application in the first place so that you minimise the chances of receiving an objection.
Our experienced trade mark lawyers can assist with trade mark applications 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
The trade marks examiner will object if your trade mark is substantially identical or deceptively similar to another trade mark that has already been registered or is currently pending. The examiner will also consider whether your trade mark application covers similar goods and services.
No, it is very common to receive initial objections to a trade mark application. It does not necessarily mean IP Australia cannot register your trade mark. There are strict requirements you must meet. These include ensuring your trade mark is registered in the right name, does not include scandalous content, and can distinguish your goods and services.
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