If you’ve received an adverse examination report from IP Australia after filing a trade mark application, it means the examiner has found issues that prevent your trade mark from meeting the requirements of the Trade Marks Act 1995 (Cth) (Trade Marks Act).
This guide explains how to respond to an adverse examination report, what evidence you may need to provide, and how to overcome common objections raised under sections 41 and 44 of the Trade Marks Act.
What is an adverse examination report?
An adverse examination report is a formal notice from IP Australia explaining why your trade mark application does not meet legislative requirements. It outlines:
- the specific grounds for refusal
- the steps you can take to overcome those issues
- the examiner’s contact details for further discussion
To better understand trade mark fundamentals, including how objections arise and how applications are assessed, visit our Trademarks page.
When do you need to respond to an adverse examination report?
You typically have 15 months from the date of the report to resolve these issues and keep your trade mark application alive.
Failing to respond within this timeframe will result in your application lapsing.
How to respond to an adverse examination report
Your response should directly address the objections raised in the report. Depending on the issue, you may need to:
- Provide evidence of use showing that consumers recognise your trade mark as identifying your goods or services;
- Supply evidence of intended use where you plan to launch the trade mark soon; or
- Argue that the examiner’s interpretation of the Trade Marks Act does not apply to your circumstances.
Evidence should include details such as when and how the trade mark has been used, advertising expenditure and examples of branding in use.
Common objections under section 41
An issue raised under section 41 of the Trade Marks Act means that your trade mark is not capable of distinguishing your goods and/or services from the goods and/or services of other people.
Section 41(3)
An issue raised under section 41(3) of the Trade Marks Act means that your trade mark is not capable of distinguishing the designated goods or services from the goods or services of other persons as:
- your trade mark does not distinguish the designated goods or services from the goods or services of other persons; and
- you have not used the trade mark before the date your trade mark application was filed to overcome the above.
You can overcome this issue by proving that:
- at the time you filed your application your trademark did distinguish the designated goods or services from those of others; and
- before filing the application, consumers viewed your trade mark as an indicator of trade source; or
- consumers view it as an indicator of the trade source rather than as a description of the goods/services.
Useful evidence includes:
- The history of use and the date of first use;
- Geographic areas of use;
- Goods or services sold under the trade mark; and
- Examples of advertising and promotion materials.
Section 41(4)
An issue raised under section 41(4) of the Trade Marks Act means that your trade mark is not capable of distinguishing the designated goods or services from the goods or services of other persons as:
- your trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
- your trade mark does not distinguish the designated goods or services as being your goods or services having regard to the combined effect of the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons, your use (or intended use) of the trade mark and any other circumstances.
To address this, you can provide:
- Evidence of actual use and consumer recognition; and/or
- Evidence of intended use, including launch plans, market research or promotional strategies.
Common objections under section 44
An issue raised under section 44 of the Trade Marks Act means that the trade mark which you have applied for is considered similar to at least one other trade mark.
An examiner will raise this if your trade mark is substantially identical with or deceptively similar to, an earlier registered or pending trade mark covering related goods or services.
You can overcome section 44 issues by demonstrating:
- Prior use – you used your trade mark before the earlier one was filed;
- Honest concurrent use – you have used your trade mark alongside another without causing public confusion; or
- Other circumstances – such as long-standing coexistence or geographical differentiation.
How do you prove prior use of your trade mark?
In order to prove prior use, you should provide clear details about:
- the specific goods or services sold using the trade mark;
- the year/month when the trade mark was first used in Australia to sell your goods and/or services;
- whether the trade mark was used continuously to sell your goods or services, up to and including the priority date of your application; and
- how the trade mark was first used to sell your goods or services.
How do you prove honest concurrent use of your trade mark?
In order to provide honest concurrent use, you should provide clear information about:
- when and why you chose to use your trade mark;
- whether you knew of the earlier trade mark when you chose your trade mark;
- the specific goods or services sold using your trade mark;
- when your trade mark was first used in Australia to sell goods or services;
- whether you have used the trade mark continuously;
- the country/state/regions where the trade mark has been used to sell goods or services;
- whether you know of any confusion that has occurred between the trade marks;
- how much you spent on advertising and promoting the trade mark each year;
- how much you received from selling the goods and services using the trade mark each year;
- any other information or materials which will help show how your trade mark has been used.
What happens after you respond to an adverse examination report?
Once your response is lodged, the examiner will consider your submissions and decide whether to accept your trade mark application or, if the problems remain outstanding, issue you with another adverse examination report.
If another adverse report is issued, you must still resolve all outstanding matters within the original 15-month period.
For a full overview of our services in trade mark registration, enforcement and strategy, see our Intellectual Property page.
If your trade mark has been filed or is intended for use overseas, see our International Trademark Registration page for guidance on global protection.