So you have thought of a great brand for your business. You have even employed graphic designers and marketing consultants to help you with your branding. You want to protect your brand because it will represent your business and differentiate you from your competitors.

You know that one of the ways you can protect your brand is by obtaining a trade mark registration. After doing your research, you applied for a trade mark using eServices. After a few days or months, you receive a letter from IP Australia which states that there is or are problems with your application. What should you do?

Determine What Kind of Objection Was Raised

First, read the report carefully and find out what kind of objection your trade mark application is facing. There are two kinds of objections. Formality objections are issues raised because there are issues with who owns the trade mark or issues with the goods and services specified in the application or their classification. These objections are relatively easy to address, and usually, IP Australia’s letter will provide instructions on how to resolve them.

Substantive objections are more difficult to resolve. The most common substantive objections raised by examiners from IP Australia are those derived from section 41 and section 44 of the Trade Marks Act 1995.

If you receive a letter from IP Australia stating that your application is objected to because of section 41, it means that the examiner is of the view that your trade mark is not sufficiently distinctive.

If the objection raised is in relation to section 44, it means that the examiner is of the view there are registered and pending trade marks on the register that conflict with yours.

Options to Overcome Substantive Objections

It is important to remember that a letter from an examiner indicating that there are objections to your application does not necessarily mean that you cannot register your trade mark. We set out your options below for responding to such a letter, especially ones with section 41 or section 44 objections.

Submissions in Rebuttal

If you disagree with the decision, you may respond to the examiner by sending submissions in rebuttal. In your submission, you may explain to the examiner why you think the decision is wrong and request the objection be reconsidered.   

Evidence of Trade Mark Use

Another option is to provide evidence of use of your brand as a trade mark. This option is more likely to succeed than sending through submissions in rebuttal. This entails collecting, organising and submitting evidence of your use of your brand as a trade mark. Your success in overcoming the objection will depend on the quality and quantity of the evidence you submit and the strength of the objection raised by the examiner.

A Combination Of Both

Your third option is to send a combination of a submission in rebuttal and evidence of use. The success of overcoming the objection partly depends on the strength of the objection raised and providing the examiner with submissions to weaken the objection. You may have greater chances of success if you submit evidence of use along with a submission in rebuttal, rather than just sending one or the other.

Key Takeaways

When you receive an objection to your trade mark application, it is important not to give up too easily, especially if you have already significantly invested in your branding.  When an objection is raised, you are given 15 months to respond. Use this time to research and develop a strategy to overcome the objection, as well as determine how strong the objection is.

If you need more information, your examiner’s phone number will be on the report. However, if you want legal advice or assistance in overcoming the objections and best strategy to use, it is best to contact a trade mark lawyer. 

Questions? Get in touch on 1300 544 755.

Raya Barcelon

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