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Why was my trade mark refused by IP Australia?

When you file a new trade mark application with IP Australia, an examiner gets appointed to assess your trade mark against the criteria of registration that is set out in the Australian Trade Marks Act 1995, and these include a number of different requirements for registration. There are different reasons why your trade mark application might be refused.

The most common objections that are raised during the examination are either that:

a) the trade mark is not sufficiently distinctive, meaning it is likely too descriptive and not seen, immediately, as functioning as a trade mark for your goods or services; and/or,

b) that your mark is too similar to another mark that’s already on the register and claims similar goods or services. Basically somebody else has filed a similar trademark before you did.

Distinctiveness objections

A distinctiveness objection will be raised if your trade mark is not capable of distinguishing your goods or your services from the similar goods or services provided by other traders. That objection will be raised if your mark, for example, is a word or a sign that is ordinarily used to indicate the kind, or quality, or quantity, intended purpose, value, geographical origin, or some other characteristic of your goods or services.

Some examples of terms that are purely descriptive and have no inherent distinctiveness, might be terms like “real estate” applied in relation to property listings, Merino applied in relation to wool, Italian applied in relation to tiles. Those are purely descriptive terms because they will indicate the nature of the goods or services or the origin of the goods.

It’s important to note that a distinctiveness objection can be raised not only in relation to words in terms that are purely descriptive, but they can also be raised in relation to terms that have some distinctiveness, but, are not sufficiently distinctive. In other words, if an examiner considers that your mark is a sign that other traders might think of and wish to use in relation to their own goods or services, your application might still be rejected on this basis.

There are some examples that we can give for marks that have some distinctiveness, but, are not sufficiently distinctive. A common example would be a stylised trade mark, that is, comprising of descriptive words but are presented in a stylised font, or perhaps they have a very simple border or a flourish that won’t be considered enough to distinguish it from the plain descriptive word itself. And so an objection would be raised.

Another example of a mark that’s not sufficiently distinctive would be a slogan that might be common in a given trade. An example of that, that was the subject of a court case with the phrase, “makes your job easy”. That was applied for in relation to hire and rental services, which of course, might make your job easy. And that’s a phrase that the court decided that other traders who also provide hire services might wish to use.

Other examples of marks that are not sufficiently distinct are adjectives that don’t directly describe the goods or services, but might be seen as alluding to it and might be seen as phrases that other traders think of naturally and wish to use. An example of that might be the word eclectic in relation to design services or sheen in relation to cotton.

It’s possible you can overcome this sort of objection or rejection from an examiner if you have evidence to show that you’ve used your trade mark to a sufficient extent to overcome the objection. The nature and volume of the evidence that you need to overcome the objection will depend very much on the degree of distinctiveness of your mark.

So going back to the example of Merino in relation to wool, because that term is entirely descriptive, the volume of evidence required to overcome that kind of objection would be extensive. It might even be that you simply could not overcome an objection in relation to it a term like Merino simply because it’s used so commonly in the trade that it will never be capable of distinguishing one traders woolen goods from the similar goods of other traders.

However, there are some examples of marks that are purely descriptive, which have been used to such an extent that they can be protected. And there are some well-known examples such as realestate.com.au, which ordinarily would be seen as a website that contains property listings, and that’s exactly what it is. However, that trade mark has been used for so long and to such an extent that the owners of the mark were able to register it as trade mark by filing persuasive evidence of their use of the trade mark for the services in the marketplace.

Alternatively, if the examiner has found that your mark has some adaptation to distinguish, but isn’t sufficiently distinctive, for example, like “Sheen” in relation to cotton, then the amount of evidence that you have to present to overcome that kind of objection would be less than what you would need to show to overcome an objection against a purely descriptive mark.

Particularly, in this sort of an objection you are invited to file evidence of actual use of the mark, as well as intended use. Unlike a purely descriptive mark, that requires evidence to show the name factually distinguishes your goods/services from others (and that it did so at the filing date), this sort of objection – where the mark has some capability of distinguishing – requires evidence that shows either the name is, or will become through continued use, capable of functioning as a ‘badge of origin’ for the relevant goods/services.

Conflicting Trade Mark Objections

The other common objection that we see during examination of a trade mark in Australia is a citation objection. That’s where there is one or more earlier mark on the trade mark register that’s considered by the examiner to be too similar to your trade mark, and, claims similar or related goods or services.

This kind of objection involves an assessment by the examiner of whether your mark is substantially identical to or deceptively similar with any earlier marks already on the register. And by deceptively similar we mean either the same or so similar that it would be likely to cause confusion because they have the same dominant elements. It also involves an assessment of whether the goods or services that are claimed in your application are the same or similar or closely related to the goods or services as the earlier mark.

The nature of the goods/services claimed are key. It is possible for two very similar trade marks to exist where the goods or services are entirely unrelated. So, you will not receive a rejection simply because a similar name is on the database, but may do if that similar name covers the same or related products or services to yours. An example of that would be if you were claiming, for example, items of fashion and clothing, and there was an earlier mark that was very similar to yours that was claiming retailing of clothing. Then those would be considered to be closely related goods and services because they’re often provided at the same time by the same trader under the same mark.

One of the objectives of the Trade Marks Law is to reduce consumer confusion that might otherwise occur if there are two or more deceptively similar trade marks being used for the same or similar goods or services. And that’s because it’s important that consumers can have confidence about the trade sources, their goods or services that they purchase under a given brand. That’s why that objection might be raised during examination to avoid that confusion occurring and to avoid lots of trade marks that are too similar coexisting.

There are different ways that a conflicting trade mark objection be overcome. Filing evidence of use may be sufficient to overcome a citation objection, if you can show that you used your trademark before the earlier mark was on the register, and you’ve used it continuously since then.

Alternatively, if you can show that you adopted your trademark after the earlier trademark was registered, but that you adopted it honestly, and you’ve used it concurrently for a sufficient amount of time to show that the marks can continue to coexist peacefully. Notably, evidence in a conflicting trade mark objection is at the date of filing an application. Any use of your trade mark after filing cannot be considered evidence in response to this type of report.

Another way to overcome that kind of objection is, if it’s appropriate, to obtain a letter of consent from the owner of the prior mark. That might be appropriate if the party’s actual goods and services provided in the marketplace are different, even if there’s an overlap on paper. For example, if the earlier mark has broad claims to goods and services that technically encompass what you’re claiming, but in reality, the parties operate in different marketplaces, then it may be possible to obtain a letter of consent from the prior mark owner, just on the basis that there’s unlikely to be consumer confusion arising from the parties using their marks for different goods and services in reality.

Further, in some cases there can be further options if you have a citation objection. For example, you might be able to challenge the registration of the prior mark under certain circumstances, for example, if it hasn’t been used for at least three years.

If you face a distinctiveness objection, or a conflicting trade mark objection, it may be best to seek advice from a trade marks attorney as they can provide you with options based on your specific circumstances.

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