Before your trade mark application is approved, it must first undergo scrutiny by Intellectual Property (IP) Australia through their trade mark examination process. There is no guarantee that your trade mark application will be successful. The reason being is that IP Australia do not want to restrict businesses too much in their dealings with the public. They recognise that there needs to be a level of free use in the market.

IP Australia, the administrative body that processes trade mark applications, determine whether or not your particular trade mark ticks all the boxes through the trade mark examination process. Overall, the entire examination process takes between three to four months and there could be various results once IP Australia have finalised their examination. This article will outline the possible outcomes resulting from IP Australia’s trade mark examination.

Adverse Examination Report

An adverse examination report usually indicates a negative result in your trade mark application and outlines detailed reasons why IP Australia did not accept your application in this first instance. At this stage, IP Australia may provide you with the opportunity to address their concerns within a specified time frame. If you plan to object to any of the reasons for your refusal, you may need to use supporting information and evidence or provide detailed legal arguments why you believe the decision was incorrect. IP Australia often requires evidence of use. The time frame for response needs to be within 15 months of receipt of the report. This not only includes your response, but the time taken to consider the response.

Deferring a Trade Mark Application

If your trade mark has not been accepted, you may have the opportunity to defer registration.  You will need to lodge a separate request to defer trade mark registration. This option is available within 15 months upon receipt of a report. There are certain instances when deferment may be practical for your situation, including:

  • when you want to establish prior use,
  • when a conflict trade mark expires, or
  • when a conflict trade mark is in the process of being removed.

Acceptance

If, after the examination process, your application is accepted, IP Australia will notify and publish your desired trade mark in the Australian Official Journal of Trade Marks. This initial stage means that you have passed the legislative requirements for registering a trade mark and now need to cross the hurdle of avoiding any oppositions or challenges from being made. Any opposers to your trade mark registration application have three months to lodge their opposition. The trade mark examiner will need to consider all opposition. This may extend the time frame for registration.

Conclusion

LegalVision’s expert trade mark lawyers can assist you if you have already filed a trade mark application and have received an adverse report or request for additional information based on evidentiary use. We would be pleased to provide you with an outline of your next steps and options as well as give you advice on how to address IP Australia’s concerns!

Kristine Biason

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