How to Respond to an Adverse Trademark Report

Protecting your brand is vital to the success of your business, so it can be very stressful to have your trademark application rejected by IP Australia due to problems with your application.  Should your trademark be determined as being unfit for registration, an examiner from IP Australia will outline the reasons involved in the objection.

The professional team at Mark My Words have years of experience when it comes to dealing with adverse trademark reports and we can help you make sense of what has happened and the action you can take going forward.

Understand the types of Objections Raised

There are various grounds within the Trade Marks Act 1995 (the Act) that allow for the examiners to issue an objection or rejection to the registration of a trademark. However, the two we see most often are:

  1. The proposed trademark is not distinctive or it consists of a common or generic term such that it is likely other traders would have genuine need to use the same term in relation to similar goods/services to yours (section 41 of the Act)
  2. The proposed trademark is substantially identical or deceptively similar to an earlier filed trademark for the same or related goods/services to yours (section 44 of the Act)

The examiner’s report from IP Australia should contain information setting out how you may be able to resolve the issues. IP Australia does not provide advice, and the report may not always detail the full range of options available to successfully overcome the problems. Substantial objections can be more difficult to resolve and, as previously noted, are often derived from section 41 and section 44 of the Trade Marks Act 1995.

If your trademark receives an adverse report from its examiner because of section 41, it indicates the IP Australia examiner believes your trademark has not been sufficiently inherently adapted to function as a trademark (i.e. it is not a distinctive sign in relation to the claimed goods and/or services that distinguishes those goods/services from other traders’ activities).  If your application is declined due to section 44, this would indicate that the IP Australia examiner believes your proposed trademark is in conflict with pending and/or registered trademarks; that because of the similarities between your trademark and the earlier trademark/s confusion is likely to occur.

Dealing with Negative Reports for Non-Distinctive Trademarks

A trademark is a sign used to differentiate one trader’s goods or services from the other similar products and services sold by other traders in the marketplace.  Based on that definition it’s vital to the success of the application to make certain your proposed trademark is unique and distinctive enough to be identifiable to your business.

IP Australia will consider the eligibility for registration based on the ‘strength’ of the trademark therefore the more distinctive a trademark is, the stronger and more defendable it likely becomes.  If your trademark is considered too weak there’s still an opportunity to overturn the decision if you can demonstrate that your ‘weak’ sign has become synonymous with your goods or services, or if by continuing to use the mark will result in distinguishing your goods or services in the marketplace.

To be classed as ‘inherently adapted to distinguish [the goods or services]’ the strength of your mark must include unique and distinctive words that do not simply describe your goods/services or aspects of them to avoid any section 41 objections.  Good examples of these types of marks include Polaroid, Apple and Ford Mustang.  It can be difficult to predict what IP Australia will deem too weak for a trademark resulting in a section 41 issue.  To help determine whether an objection of this kind will apply, you should always ask yourself this question: “Is it likely other traders will have genuine need to use the same or very similar trademark in connection with their similar activities to mine?”  

If your answer is yes, you should be prepared for the likely fact that others will have a genuine need to use the same name for the same sorts of goods or services. This will more likely result in you receiving an adverse report under section 41.

How to Deal with a Negative Report for Generic Terms

Attempting to register a common or generic term with IP Australia related to the sale of your goods or services will usually result in you receiving a negative report.  Using Apple as an example, when looking to register Apple in connection to computers, mp3 players and software for example, the term is clearly found to be attributed to a distinct brand.  A trader applying to register Apple as a trademark relating to fresh fruit would discover the term to be considered as descriptive.

To avoid a situation where one business has a monopoly over a term which may have the potential to deny all other businesses in the same category from using it, IP Australia cannot grant trademark protection for the use of any common or generic terms. Some trademarks are in no way adapted to distinguish the goods/services of one trader from others. These names tend to be highly descriptive and in common use and are particularly challenging to register.

For example, a mark such as “Sydney Plumbers”, filed in respect of plumbing services would have a very hard time registering, as other traders located in Sydney and in the plumbing business would have a real and genuine need to use this term for those activities. It would be unfair for one business to have exclusive rights to the use of such a descriptive term, putting all other businesses in the same category at a major disadvantage. A name like this would require extensive and persuasive evidence to show that the does distinguish that plumbing service from all others in Sydney. those goods/services from all others in the market.

Dealing with Negative Reports for Similar Trademarks

Submitting an application to IP Australia for the registration of a trademark that closely resembles, or is identical to, a previously filed trademark for similar goods or services to your business, may result in receiving a negative report.

This is to prevent consumers not being able to distinguish between or identify brands within the marketplace; basically to prevent confusion between brands.  It is possible to avoid infringing upon the rights of another trademark holder if you trade in unrelated goods and services even if the name is the same.  For example, if you wanted to register your trademark in mechanical supplies and a similar mark was used for hair care, it’s not likely that you would be infringing on the rights of this holder, nor is it likely the earlier mark would prevent you from registration.

The ‘likelihood of confusion’ is a key factor in whether a trademark will see a section 44 objection. The IP Australia examiner overseeing your application will look at many factors when deciding whether your trademark is too similar to an earlier trademark.  Some of these factors include the type of goods and services, the similarity of the mark, the impression or idea of the trademark, the type of customer amongst others.  In the case that you receive an adverse report under section 44 of the Trade Marks Act, you may have the opportunity to respond to the decision and overcome the issue of similar trademarks filed before yours.

Included in the various options is the opportunity to make changes to your goods or services so as to remove any overlap with previously filed trademarks.  You may also file evidence of use which will need to demonstrate either prior use of your mark, or the honest simultaneous use of your make within the marketplace against an existing mark. In some circumstances you may be able to overturn the objection based on ‘other circumstances’ – an example would be an executed letter of consent from the earlier trademark owner permitting the use and registration of your trademark

Responding to an Adverse Trademark Registration Report 

Receiving an adverse report from IP Australia does not usually mean your application will be outright rejected.  The adverse report you receive is to give you a detailed list of the reasons for objection, while giving you the chance to make changes or bring your application into order for acceptance.  You will be granted 15 months from the date the report was issued in which to reply and be in order for approval.  Failure to be in order for acceptance by that time will result in needing to pay an extension fee to avoid your application lapsing, or, indeed your trademark application lapsing.

Mark My Words encourages clients to reply to their reports sooner rather than later within this 15-month period, as the examiner requires at least four weeks prior to your due date to consider your response. If a first response is not successful, your due date will not change. It is advisable to ensure ample time remains of your 15 month time-frame in case a second (or even third or fourth) response needs to be submitted in support of your application.

During the 15-month appeal time, we suggest that you explore the strength of the objection and if appropriate, develop a strategy to overcome it. Do not simply ‘give up’ as there are often options to address these issues, even if those options are not discussed in your IP Australia report. It may be necessary to seek advice from a trademark specialist to understand all of the options available as well as understanding the pros and cons of the various options.

After you respond to your adverse report one of the two points below will be certain:

  1. If your response does not overcome all of the objections raised by your IP Australia examiner, a further adverse report will be issued to maintain the decision. You will have the chance to lodge further responses. Be aware though, the 15-month response time frame does not extend with each report.
  2. If your response overturns all objections, your trademark application will be approved. Once this trademark application has been advertised as accepted for registration, it will undergo a two-month period during which other persons can object to your registration on the grounds provided for in the Act. When you pass through this period without opposition, your trademark can be registered and you will gain the rights of a registered trademark holder.

If you need assistance with this process, Mark My Words is here to help.

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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