If you are keen to protect your business's intellectual property and brand, you have probably considered filing a trade mark application. A trade mark application is the only way to register a trade mark in Australia. A registered trade mark gives you the exclusive right to use the trade mark for the goods and services claimed.
If IP Australia believes that there are problems with your trade mark, or if a third party opposes your application, you may need to prepare a response to try and overcome these objections. In the following article, we will look at who can object to your application, common grounds for objection, and what you can do to overcome them.
Who Can Object?
IP Australia examines every trade mark application that is filed in Australia. An examiner will be assigned to your application and determine if there are any reasons why your application should not proceed to acceptance. If your application receives an objection during this stage in the form of an adverse examination report, you will have 15 months from the date of the report to overcome the objections raised.
The other type of objection that you may encounter is an opposition. Once IP Australia accepts a trade mark, they will advertise it for two months before registration. During these two months, anyone can oppose your application. They will need to substantiate why they opposed your application. Still, if they can establish a ground for opposition, your trade mark will not proceed to registration and will lapse. This article does not discuss oppositions, and we suggest obtaining legal assistance if you receive opposition against your application.
Common Grounds for Objection
There are a number of grounds that an examiner may raise in response to your trade mark application. The most common are as follows:
Prohibited and Prescribed Signs
An examiner can object to your application if it includes a sign that is prohibited in a trade mark.
Trade Mark Cannot be Represented Graphically
If the examiner considers your trade mark incapable of graphic representation, they may object to it. For example, if you try to register a logo that you cannot represent in image form, this may receive an objection.
The examiner can object to your application if they consider it too descriptive of the goods and services claimed. There are two potential levels to this specific objection depending on your trade mark.
- The first is that the mark has limited adaptation to distinguish. This means that your mark is not distinctive enough to registered as a trade mark and is not sufficient for the trade mark to be accepted without evidence of use or other circumstances.
- The second is that the trade mark has no inherent adaptation to distinguish. This is the stricter of the two thresholds. It means that the prospective trade mark is currently in common use and serves directly to describe the goods or services. For example, if you sell apples and attempt to register the word "apples" as a trade mark, this would likely fall under this threshold. This is because your trade mark does not distinguish your business from other apple sellers in any way.
Suppose the examiner considers your trade mark of having no inherent adaptation to distinguish. In that case, you will need to demonstrate that you have been using the trade mark already for a significant amount of time before the examiner will accept your application.
Scandalous or Contrary to Law
If your trade mark is scandalous or offensive in some way, the examiner may object to your application. In addition, if your trade mark registration would be contrary to another law of Australia, the examiner will object.
Likely to Deceive or Cause Confusion
If your trade mark is likely to deceive or cause confusion, the examiner may object. A good example of this is when a trade mark refers to a particular geographical location. If you cannot confirm that the goods and services originate from that location, then it is likely to deceive or cause confusion for consumers.
Similar Trade Marks
If the examiner considers your proposed mark too similar to a pre-existing trade mark registration, or even a pending application, they can object to your application. Your trade mark does not need to be identical to a pre-existing trade mark for this ground. The examiner will consider whether the trade mark looks the same, sounds the same, or has common elements that consumers would confuse with the pre-existing trade mark.
If you receive any of the objections listed above, or a combination of them, then you will need to prepare a response to the examination report. Strategies for overcoming the objection can vary depending on the objection, such as:
- evidence of use;
- submitting arguments against the examiner's decision;
- seeking consent from the owner of a pre-existing trade mark; or
- removing a trade mark that you have not used for a required period of time.