Overcoming an Objection Under Section 44 of the Trade Marks Act 1995

It is not uncommon to file a trade mark application and receive a report from IP Australia setting out reasons that they do not accept your trade mark. The finding of a similar mark is one of the more common reasons you might receive one of these reports when IP Australia examines your application. It’s important to understand that the report is an objection most of the time rather than a rejection of the trade mark.

An objection based on section 44 of the Trade Marks Act 1995 (the Act) basically means that IP Australia has found your trade mark the same or similar to a trade mark that was filed in Australia with an early date that yours and that is for the same or related types of goods or services.

We’ve recently touched on providing evidence of trade mark use, which is one of the ways in which you can address an objection under section 44 of the Act. This post aims to provide further information to help understand why you may have received this sort of objection and what options you have to address the problems.

Are the Marks Substantially Identical or Deceptively Similar?

Often we receive enquiries from new clients when they receive a report, not really understanding why their trade mark has been knocked back. During examination IP Australia needs to determine if your trade mark is substantially identical or deceptively similar with an earlier filed mark for similar goods or services. Basically, they determine if the trade mark you are trying to register so closely resembles an earlier filed mark, for similar goods and/or service, that confusion between your mark and that earlier mark would be likely if your trade mark was registered.

Therefore, the fact the marks are not necessarily absolutely identical does not make the later application acceptable. If your mark contains, for example, a very unique/distinct word and that word is already registered for similar goods/services to yours this would likely see a section 44 objection, as the use of that distinctive work in your trade mark may cause confusion and it may be assumed your brand is related to another.

Other examples include the use of two names. For example “Jacqui & Fred”. If there is an existing Jacqui mark or Fred mark for the same goods, they could be obstacles as the use of a brand such as “Jacqui & Fred” may cause confusion as it may be assumed that the existing Jacqui brand has teamed up with a Fred brand to create a joint brand.

If the trade mark examiner draws the conclusion that there are grounds to object to your mark on the basis of section 44 of the Act they send you a report and provide you 15 months to bring your application into order for acceptance – e.g. by responding in a suitable manner to the report showing that the circumstances allow for the acceptance of your trade mark.

Evidence of Prior Use, Honest Concurrent Use & Other Circumstances

Specific to section 44, there are several ways in which IP Australia will accept your application, even though its similar to an earlier trademark on the system. In summary or brief form, the three ways, typically, you could address that sort of an issue is filing evidence of what they call “prior use”, which is demonstrating that you actually used your trademark before this other person filed their trademark application, and you’ve used it until the time of filing your own application. If you can establish that, then IP Australia must withdraw that problem from preventing your trade mark.

The second way you might be in a position to tackle it, is if you’ve got ” honest concurrent use”. So rather than showing you used it before this other person filed, you would need to show that you’ve chosen your trademark honestly and have used it honestly since you first started using the trade mark. You also need to show that you’ve used it concurrently with that other person’s trademark in the marketplace, for a reasonable period of time and to a reasonable degree.

This is to show that you’ve invested in that brand to such a degree and used it to a reasonable extent that you are equally deserving to protect your trade mark. Also, hopefully, this evidence will show that your trade mark has co-existed with this other person’s trademark without any issue. There’s no guarantee that the conflicting mark will be withdrawn as an issue with “honest concurrent use” like there is with “prior use”.

It’s up to the examiner to look at that evidence that you’ve presented and determine whether or not it is indeed enough to satisfy the provisions of section 44 of the Act of being an “honest concurrent user” of your trademark, alongside that earlier person’s trade mark.

There is no exact time-frame you need to have used your mark for the provisions of honest concurrent use to be met as various factors will be considered. However, several years prior to the filing of the trade mark application is typically recommended.

The third way that you might consider where evidence is either not viable or for whatever reason you might not choose to go down the evidence path, is being able to show to IP Australia that there are other circumstances that make it appropriate to approve your trademark, despite others being already on the register.

So most commonly, in that area of other circumstances, would be, obtaining a letter of consent, from the owner of that earlier trade mark. Such a letter sets out, they’ve got no problem with you using or registering your trade mark. We recommend seeking advice before approaching a trade mark owner for consent.

Approaching the owner does carry a risk that they reject your request, or worse, that they take active steps to prevent your use or registration of your brand. Typically we would look at this option if:

  1. Despite an apparent overlap on the trade marks register there is no commercial conflict or likelihood of confusion in the marketplace;
  1. The earlier mark does not appear to be used by the owner and has been on the register long enough that it is vulnerable to removal for non-use. Read here for more about the possibility of removing trade marks for non-use.

There are some other circumstances that do come into play, but the letter of consent would certainly be most common that we see, in terms of other circumstance, for the purpose of overcoming that problem. Others may include owning an earlier mark already that’s the same or similar to the one you are now trying to register – although, you may still need to provide some evidence of use to support it; or that there are court orders in place that would prevent the owner of the earlier mark from actually interfering with your use of your trade mark.

Deadline to Respond

Your report will give you 15 months to bring your application into order for acceptance. Note that within this time frame, the examiner asks for 4 weeks to consider any response you make. If you are engaging a trade mark attorney to assist, they will obviously need time to review and prepare evidence on your behalf. And, if the strategy is to seek a letter of consent you will need to allow time for that. For Section 44 objections we do encourage responses to the reports sooner rather than later.

Once you file your response, particularly if you are filing evidence as your response, the examiner may issue a second report if they find the evidence in sufficient or missing any information. The deadline does not change during the process, so, you want to be sure you have time remaining within your 15 months to respond to any further reports.

It is possible to seek extensions of time for responding to examiner’s reports, however, fees do apply to do so.

Free Consultation Available

Preparing evidence of use can be complicated, and approaching trade mark owners for consent can be risky. Mark My Words Trademark Services is happy to hear from you and conduct a review of your report and provide preliminary comments as to your options and chances. Feel free to get in touch to see how we can help you.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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