If you’ve submitted a trade mark application with IP Australia and it does not meet the legislative requirements set out in the Trade Marks Act 1995 (Cth) (Trade Marks Act), you will receive an adverse examination report.
The adverse examination report will set out:
- the reasons why your trade mark application does not meet the legislative requirements;
- the options available to you in overcoming these legislative requirements; and
- the contact information of the examiner assigned to your case.
What do you do if you receive an adverse examination report?
If you’ve received an adverse examination report, you will need to submit a response to the report with IP Australia.
Note: You have 15 months from the date of the report to address any problems with your trade mark application.
What should I include in my response to the adverse examination report?
If the examiner has raised an objection to your trade mark application, there are provisions within the legislation which you might use to address the objection. For example, you could compile and submit what is known as ‘Evidence of Use’ of your trade mark.
Evidence of use is usually information about how your trade mark has been used and promoted. The type of information you will need to submit will depend on what issue has been raised by the trade mark examiner.
There are two common grounds for rejecting a trade mark application under the Trade Marks Act:
- Issues raised under section 41 of the Trade Marks Act;
- Issues raised under section 44 of the Trade Marks Act.
How do you overcome an issue under section 41 of the Trade Marks Act?
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.
See below the two issues that section 41 of the Trade Marks Act present to trade marks applications.
Section 41(3) of the Trade Marks Act
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.
Evidence of actual use should include:
- a brief history of the trade mark including the date when the trade mark was first used on or in connection with the goods or services of your application;
- the country/state in which the trade mark has been used;
- the goods or services sold under the trade mark; and
- examples of how the trade mark has been used to sell those goods or services.
Section 41(4) of the Trade Marks Act
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.
If the adverse examination report raises issues under section 41(4) of the Trade Marks Act:
- you will need to provide evidence that at the time you filed your application your trade mark did distinguish the designated goods or services from those of others; and
- you can also provide evidence of intended use.
You can demonstrate this by providing evidence which sets out your commercial plans relating to the trade mark. This can include pre-launch market research and market estimates, product launch plans and information about advertising and sales plans.
How do you overcome an issue under section 44 of the Trade Marks Act?
If a trade mark examiner identifies problems with a trade mark under section 44 of the Trade Marks Act, it means the trade mark which you have applied for is considered similar to at least one other trade mark.
An issue raised under section 44 of the Trade Marks Act means that your trade mark application must be rejected if:
- it is substantially identical with, or deceptively similar to a trade mark of another person in respect of similar services or closely related goods; and
- the priority date for the registration of your trade mark is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
You may be able to overcome issues raised under section 44 of the Trade Marks Act by supplying evidence that shows you:
- (Prior Use) used your trade mark prior to a similar or identical trade mark with an earlier priority date;
- (Honest Concurrent Use) you adopted or came up with your trade mark honestly and you have been using it concurrently with a similar or identical trade mark to your own with no public confusion between the two trade marks; or
- (Other Circumstances) any other information which you think will address the issues raised by the examiner.
How do you prove prior use of your trade mark?
To prove prior use, your response to the adverse examination report must include:
- the specific goods and/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 to prove honest concurrent use of your trade mark?
To prove honest concurrent use, your response to the adverse examination report should include a brief history of the trade mark, including the following information:
- 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 I respond to the adverse examination report?
Once you lodge your response to the adverse examination report, 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.
It is important to keep in mind that you have 15 months from the date of the adverse examination report to successfully address any issued with your trade mark application.
If you lodge your response to the adverse examination report and the examiner issues you with another adverse examination report, you will need to allow sufficient time within this 15 month period to respond to the subsequent adverse examination report so that the issued with your trade mark application can be resolved.
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