In Short
- Trade mark applications are often challenged due to a lack of distinctiveness or similarity to existing trade marks.
- Descriptive or non-distinctive terms in trade marks can lead to objections, as they may not clearly distinguish your goods or services.
- Correct classification of goods or services is critical, as misclassification can cause application issues and potential legal disputes.
Tips for Businesses
To improve the success of your trade mark application, conduct a thorough search to ensure there are no conflicts with existing marks. Consider engaging a trade mark attorney for expert guidance on navigating potential objections. Make sure to accurately define and classify your goods or services to avoid future legal challenges.
If you have ever encountered the trade mark registration process either in Australia or overseas, one thing you will likely learn is that the process is not as simple as it might have seemed at the outset. Unlike securing a domain or business name, availability alone does not secure trade marks. IP Australia assesses each trade mark application in Australia to ensure that they meet specific criteria for registration as set out in the Trade Marks Act 1995 (Cth). This article explores common trade mark objections and strategies for overcoming them, particularly issues of inherent registerability and conflicts with existing trade marks.
Navigating Trade Mark Objections
If your trade mark meets all criteria easily, it should progress through the application process quite smoothly, and you should eventually have your trademark registration certificate within about 7.5 months after filing your application.
However, if you happen to be one of the many applicants who encounter objections to your trade mark application, you will know that overcoming these objections can be challenging. While receiving an objection can be disappointing, it is important to know that objections do not necessarily indicate that your trademark application will not be successful. In fact, there are several ways to navigate trade mark objections and ensure that you eventually receive trade mark registration rights.
Understanding Types of Objections
Two of the most common objections raised by IP Australia in their examination of trade mark applications are:
1. Inherent Registerability and Distinctiveness
Also known as a ‘descriptiveness’ issue or a ‘lack of distinctiveness’ issue.
Essentially, if trade mark consists of purely descriptive terminology regarding the goods or services offered under the trade mark or contains generic or commonly used terms that other traders need to use in the marketplace, this objection is likely to arise.
2. Conflict Issues
The registrar raises this objection if your trade mark is either substantially identical or deceptively similar to another pending or registered trade mark that already exists on the register and also covers the same or similar goods and services as your mark.
Other objections may arise, such as:
- formality issues;
- issues with your specifications of goods and/or services; or
- if someone finds the trade mark you applied for to be scandalous or contrary to law.
Solutions to Overcome Trade Mark Objections
While one may find it frustrating to receive an objection based on a descriptive or conflict issue, this does not mean the objection cannot be overcome. IP Australia will give you 15 months to attempt to overcome the objection either on your own or with the help of an experienced trade mark lawyer.
The most common strategies used to overcome objections are:
1. Filing Legal Submissions
This can be used in response to both conflict issues and descriptive issues.
It is recommended that you seek assistance from a trade mark lawyer if you are interested in this strategy. Essentially, lawyers file legal submissions (or legal arguments) with IP Australia to convince the examiner to withdraw the objection, drawing on case law and established legal principles. You must be prepared to persuade the examiner that your mark distinguishes your business activities under the trade mark.
2. Demonstrating That You Have a History of Evidence of Your Use of the Trade Mark
This can also be used in response to conflict and descriptive issues.
For conflict issues, you must be able to demonstrate that you have evidence of use of the trade mark either continuously before the filing date of the conflicting trade mark or that you have been using it honestly and concurrently alongside the other trade mark or marks in the marketplace for a number of years.
You can also provide evidence of use for descriptive issues. Essentially, you need to argue that the trade mark has acquired distinctiveness for your business through your history of use. Preferably, you have been using the trade mark for several years before the date of filing for this option.
3. Amending the Specifications of Goods And/or Services You Provide Under the Trade Mark
This strategy is particularly appropriate for navigating a conflict issue. If applicable to your circumstances, you can attempt to amend or edit your goods or services so that they do not overlap with the goods or services offered by the conflicting trade mark.
4. Approaching the Owner of a Conflicting Trade Mark and Seeking Their Consent to Co-Exist
This can sometimes be an appropriate strategy when facing a conflict objection.
For this strategy, you must explain to the other owner that your trade mark can coexist without consumer confusion. To do this, you may want to emphasise the specific differences and contrasts in your business activities. However, it is important to tread carefully with this strategy, as approaching an owner of a conflicting trade mark might prompt them to object to your use and registration of the trade mark.
5. Applying to Remove an Earlier Registration Based on Non-Use
This is also an applicable strategy for facing a conflict issue. If you discover that the conflicting mark does not appear to have actively been in use for at least the past 3 years, you could also consider applying to remove it from the register.
6. Considering an Alternative Representation of Your Trade Mark
Applying for a different representation of a trade mark can be a reliable method of overcoming a descriptive or lack of distinctiveness issue, especially if you have applied for a ‘word’ trade mark or a fairly simple logo. If you consider applying for a highly stylised logo that incorporates additional distinctive visual features, you may be able to overcome a descriptive issue that the word mark would otherwise face.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
The trade mark registration process can sometimes be more complex than initially expected, with the most common objections arising due to inherent registerability and distinctiveness issues and conflicts with existing trade marks. Luckily, there are most often strategies available to help you navigate objections, including:
- filing legal submissions;
- providing evidence of your trade mark use;
- amending your specifications of goods/services;
- seeking consent from conflicting trade mark owners; and
- considering filing alternative representations of your trade mark.
Ultimately, consulting an experienced trade mark lawyer will always be beneficial in these situations. Proactive measures, like comprehensive searches and choosing distinctive marks, can also help reduce objections.
If you need help navigating trade mark objections, our experienced trade mark lawyer 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
You can try filing legal submissions or demonstrate that your mark has acquired distinctiveness through long-term use. Amending your trade mark’s visual representation may also help overcome descriptiveness issues.
You can amend the goods or services listed in your application, seek consent from the owner of the conflicting mark, or provide evidence of prior use. In some cases, removing a non-used trade mark from the register could also be an option.
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