Reading time: 5 minutes

If you are keen to protect your business’s intellectual property and brand, you have probably considered filing a trade mark application. A trade mark application is the only way to register a trade mark in Australia. A registered trade mark gives you the exclusive right to use the trade mark for the goods and services claimed. 

If IP Australia believes that there are problems with your trade mark, or if a third party opposes your application, you may need to prepare a response to try and overcome these objections. In the following article, we will look at who can object to your application, common grounds for objection, and what you can do to overcome them.

Who Can Object?

IP Australia

IP Australia examines every trade mark application that is filed in Australia. An examiner will be assigned to your application and determine if there are any reasons why your application should not proceed to acceptance. If your application receives an objection during this stage in the form of an adverse examination report, you will have 15 months from the date of the report to overcome the objections raised.

Third Parties

The other type of objection that you may encounter is an opposition. Once IP Australia accepts a trade mark, they will advertise it for two months before registration. During these two months, anyone can oppose your application. They will need to substantiate why they opposed your application. Still, if they can establish a ground for opposition, your trade mark will not proceed to registration and will lapse. This article does not discuss oppositions, and we suggest obtaining legal assistance if you receive opposition against your application. 

Common Grounds for Objection

There are a number of grounds that an examiner may raise in response to your trade mark application. The most common are as follows:

Prohibited and Prescribed Signs

An examiner can object to your application if it includes a sign that is prohibited in a trade mark. 

Trade Mark Cannot be Represented Graphically 

If the examiner considers your trade mark incapable of graphic representation, they may object to it. For example, if you try to register a logo that you cannot represent in image form, this may receive an objection.


The examiner can object to your application if they consider it too descriptive of the goods and services claimed. There are two potential levels to this specific objection depending on your trade mark.

  1. The first is that the mark has limited adaptation to distinguish. This means that your mark is not distinctive enough to registered as a trade mark and is not sufficient for the trade mark to be accepted without evidence of use or other circumstances.
  2. The second is that the trade mark has no inherent adaptation to distinguish. This is the stricter of the two thresholds. It means that the prospective trade mark is currently in common use and serves directly to describe the goods or services. For example, if you sell apples and attempt to register the word “apples” as a trade mark, this would likely fall under this threshold. This is because your trade mark does not distinguish your business from other apple sellers in any way.

Suppose the examiner considers your trade mark of having no inherent adaptation to distinguish. In that case, you will need to demonstrate that you have been using the trade mark already for a significant amount of time before the examiner will accept your application.

Scandalous or Contrary to Law 

If your trade mark is scandalous or offensive in some way, the examiner may object to your application. In addition, if your trade mark registration would be contrary to another law of Australia, the examiner will object.

Likely to Deceive or Cause Confusion 

If your trade mark is likely to deceive or cause confusion, the examiner may object. A good example of this is when a trade mark refers to a particular geographical location. If you cannot confirm that the goods and services originate from that location, then it is likely to deceive or cause confusion for consumers.

Similar Trade Marks

If the examiner considers your proposed mark too similar to a pre-existing trade mark registration, or even a pending application, they can object to your application. Your trade mark does not need to be identical to a pre-existing trade mark for this ground. The examiner will consider whether the trade mark looks the same, sounds the same, or has common elements that consumers would confuse with the pre-existing trade mark.

Key Takeaways

If you receive any of the objections listed above, or a combination of them, then you will need to prepare a response to the examination report. Strategies for overcoming the objection can vary depending on the objection, such as: 

  • evidence of use;
  • submitting arguments against the examiner’s decision; 
  • seeking consent from the owner of a pre-existing trade mark; or
  • removing a trade mark that you have not used for a required period of time.

If you need help with trade mark registration, our experienced trade mark lawyers 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

Who can object to a trade mark?

Either IP Australia or a third party applicant can object to your trade mark. A third party objection is commonly known as an opposition.

Someone else has registered my trade mark. Does this prevent me from registration?

If your trade mark is the same as a previously registered trade mark, IP Australia will not register it. Additionally, a third party may oppose your trade mark if it is too similar to their own.


Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Innovation Award 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Award 2020 Employer of Choice Winner – Australasian Lawyer
  • 2020 Financial Times Award 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year Award 2021 Law Firm of the Year - Australasian Law Awards
  • 2022 Law Firm of the Year Winner 2022 Law Firm of the Year - Australasian Law Awards