Why Did IP Australia Reject My Trade Mark?

If your trademark application does not meet the requirements of the Trade Marks Act 1995 (Cth), you will receive an Adverse Examination Report. In this article, we will explain what an Adverse Examination Report means for your trademark application, and what options you have to respond to it.

What is an Adverse Examination Report?

An Adverse Examination Report details the grounds on which the trademark examiner has refused to accept your application for trade mark registration.

Common grounds for refusal are:

• your trade mark is not sufficiently distinctive of your identified goods or services because it is too descriptive or generic; or
• your trademark is too similar to an existing registered trademark used in relation to similar goods/services.

However, these adverse findings may not necessarily be fatal to your application.

How do I respond to an Adverse Examination Report?

The Adverse Examination Report may outline potential ways to resolve the issues set out by the trademark examiner. For example, it may identify whether submitting evidence of use is an option.

The Adverse Examination Report will include the trademark examiner’s contact details. You can use this to get in touch with them to discuss the objections contained in the Report or seek further information.

You may then submit a response to the Adverse Examination Report addressing the grounds for refusal and attach further evidence if appropriate.

What evidence will be relevant when responding to an Adverse Examination Report?

In many cases, the issues identified in an Adverse Examination Report can be overcome by providing adequate evidence of use. This must consist of a declaration accompanied by supporting evidence about how your trade mark has been used.

The amount and kind of evidence you should prepare when responding to an Adverse Examination Report will depend on the relevant grounds for refusal.

1. Lack of distinctiveness (s41 Trade Marks Act 1995)

If the Adverse Examination Report provides that your trademark does not sufficiently distinguish your identified goods or services, evidence that customers recognise and associate your trade mark with your goods or services will be relevant.

Information that may help you establish this includes:

• evidence of the period of use of your trademark;
  evidence of continuous use of your trademark;
  geographical extent of your trademark use;
• advertising expenditure and annual turnover figures;
• market share and price of your individual goods or services;
• examples of advertising and marketing materials e.g., online, print, television;
• evidence of any online presence e.g., social media followings, website visits and search engine results;
• evidence of any arrangements with third-party distributors;
• evidence of how your trademark has been used e.g., packaging or goods on which the trade mark is displayed;
• publicity mentioning the trademark e.g. reviews or mentions in articles;
• evidence of the size of your customer base; and
• market or consumer surveys.

2. Conflict with an earlier trademark (s44 Trade Marks Act 1995)

If the Adverse Examination Report provides that your trademark is too similar to an existing trade mark used in relation to similar goo or services, you may dispute this finding by showing that consumers would not be confused between the two trademarks.

Factors to consider will include:

• visual and aural similarities and differences between the two marks;
• essential features of each mark;
• total impression of resemblance or dissimilarity between the two marks;
• goods or services which each mark will be used for;
• circumstances in which the marks will be used;
• circumstances in which the relevant goods or services will be bought and sold; and
• nature and kind of consumers likely to acquire the goods or services.

Even if the trademarks are similar, you may still respond to this adverse finding by providing the following kinds of evidence:

• evidence of prior use meaning that your trademark was used before the conflicting mark was filed and this usage continued at least up until your application for registration; or
• evidence of honest concurrent use meaning that you came up with your trademark honestly and have been using it concurrently with the conflicting trademark without public confusion between the two.

Information that may help establish prior use includes:

• what specific goods or services you sell using your trademark;
• the year and month when you first used the trademark to sell your goods or services;
• evidence that you have continuously used your trademark to sell your goods or services, up to and including the priority date of your application e.g. annual sales figures; and
• evidence of how the trademark was first used to sell your goods or services e.g. advertising, packaging.

Information that may help establish honest concurrent use includes:

• when and why your trademark was chosen;
• evidence you did not know of the earlier trademark and were honest in adopting your trademark;
• what specific goods or services you sell using your trademark;
• the year and month when you first used the trademark to sell your goods or services;
• evidence of continuous use or, if your trade mark has not been continuously used, when and for how long it has been used; and
• how the trade mark has been used.

How long do I have to respond to an Adverse Examination Report?

From the date of the Adverse Examination Report, you have 15 months to address all the issues identified with your application. This time period includes the time it takes for you to prepare your response and the time it takes for the Examiner to consider your response.

Further time extensions may be available beyond the 15 month period, subject to fees and conditions.

If your response adequately addresses the issues raised in the Adverse Examination Report and there are no further grounds for rejection, your application will be accepted. It will then be subject to a 2-month opposition period before your trade mark can be registered.

If the problems persist, another Adverse Examination Report will be issued.

Conclusion

Receiving an Adverse Examination Report does not necessarily mean that your trademark cannot be registered. Professional advice can help overcome any issues with your application and facilitate a smooth trademark registration process.

If you wish to seek assistance on how to proceed with registering your trade mark after receiving an Adverse Examination Report, please do not hesitate to contact us.

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