Examination of a Trade Mark Application

After an Australian trade mark application is filed via IP Australia, the application proceeds to the examination phase and is assigned to an examiner, who is a delegate of the Trade Mark Commissioner.

The job of the trade mark examiner is to assess the application to check whether the legislative requirements for trade mark registration are met. The main areas of review are:

1. The acceptability of the goods and/or services claimed in the application.;
2. Whether the trade mark applied for is too similar to a previously registered trade mark or currently pending trade mark application.
3. Whether the application ought to be denied under any other grounds.

If all legislative requirements are met, the mark will proceed to acceptance; otherwise, the Office will send details of the objections to registration in an adverse examination report.

Adverse examination report

Adverse examination reports are usually issued on the basis of the following two grounds of objection;

• Sections 41 of the Trade Marks Act; that the trade mark lacks the required degree of distinctiveness to function as a trade mark within the context of the goods and/or services that it is proposed to be used in relation to; and/or;
• Section 44 of the Trade Marks Act; whether the trade mark applied for is sufficiently distinct in the context of earlier registered rights, within the context of the goods and/or services of the application and the earlier trade mark rights.

Where an adverse examination report is issued, the applicant has a 15-month period within which they must to address any objections the registration of the trade mark.

The following approaches may be adopted as a means of responding to an adverse examination report:

1. Providing submissions of legal counter-argument against the examiner’s findings which have led to the refusal of acceptance;
2. Amending the application in order to overcome the objection(s) raised or;
3. Providing evidence of prior and/or honest concurrent use which pre-dates the filing date of the application.

Evidence of use

Section 41 and Section 44 objections are the most common objections raised against an application to register a trade mark in Australia

Each of these grounds of objections may be overcome by providing a sufficient degree of acceptable evidence of use of the applied mark.

Providing evidence under Section 41

This section of the Trade Marks Act provides the grounds of rejection of a trade mark on the basis that the mark cannot be used to distinguish the claimed goods and services from those of other traders in the market.This ground is usually raised where the examiner finds the trade mark to be:

• purely descriptive of the goods and services;
• a common surname or geographical location; or
• Primarily composed of commonly used elements in the context of the applicant’s goods or services.

There are two types of Section 41 objection, namely;

1. Section 41(3) – the mark has no inherent adaptation to distinguish
2. Section 41(4) – the mark has limited adaptation to distinguish

The trade mark will only proceed to acceptance if and when the applicant manages to produce evidence that satisfies the examiner that the mark has been used to such extent that it has acquired a secondary meaning that now exceeds the primary meaning, and is therefore no longer descriptive for the claimed goods and/or services.

Types of Section 41 evidence

To overcome an objection on the basis of Section 41(3), the applicant needs to provide sufficient evidence to show that, at the date of filing, the mark had already been used to such an extent as to distinguish the claimed goods and services from those of others in the market. Evidence of intended use, such as marketing plans or mere preparation for use are not acceptable forms of evidence for the purpose of overcoming a section 41 refusal.

Evidence provided by the applicant may include:

• Sales figures
• Goods or services listed for sale
• Advertising expenditure
• Social media exposure
• Website branding
• Use of the trade mark on goods, stores, packaging, uniforms and other marketing materials.
• Features in newspapers and magazines
• Sponsorship of events
• Other information which can help to demonstrate that the relevant category of consumers associates your trade mark with the products or services filed for.
• Consumer surveys
• Publications and advertising
• Indications of market shareConsumer surveys
• Publications and advertising
• Indications of market share

Specification objections

If an objection has been raised in respect of the claimed goods/services, the applicant has the option of:

1. Amending the list of goods and/or services so as to overcome the issues raised and
2. Providing arguments to support the validity of the specification claimed, including by using material that was otherwise unavailable to the examiner at the time of examination.

Providing evidence under Section 44

Section 44 discusses grounds for rejection of an applicant's mark on the basis that it conflicts with previously registered/applied for marks on the Register. Objections in these criteria may be addressed by:

1. Providing evidence of prior use;
2. providing evidence of honest concurrent use;
3. other circumstances.

Prior use

To establish prior use, the applicant will need to provide evidence to show that the trade mark was used in Australia prior to the priority date of the cited mark(s). Evidence that may assist will include information as to how the trade mark was used, in relation to which goods and if such use was continuous.

Honest concurrent use

Honest concurrent use evidence should include a evidence showing that the mark was used for a significant amount of time before the mark was applied for, and that during that time, the mark was used in Australia, continuously, for the specific goods and services claimed, concurrently with the cited mark and that no confusion had taken place.

Other circumstances

Other special instances for overcoming an objection raised on the basis of a section 44 ground may include:

• That the Applicant is using the mark with authorisation of the owner of the cited mark (as in the case of subsidiary companies)
• That the applicant has requested and obtained a letter of consent from the owner of the cited mark

Trade mark examination outcomes

The issuance of an adverse examination report does not automatically mean that the trade mark application is rejected. Once the applicant files a response to an examination report the following may occur:

1. The Examiner will assess if the provided evidence/arguments are sufficient to overcome the objections, if all or some objections are maintained, an additional report may be issued. If the applicant fails to overcome the objections raised on the report(s) within 15 months of the first report being issued (and if no extensions are requested), the application will be refused; or
2. The provided evidence/arguments is considered sufficient to overcome the objections against the mark and the mark will be accepted for registration.

Once the trade mark is accepted, its details will be published in the Australian Official Journal of Trade Marks for a two-month opposition period. If no opposition is filed within this time, the mark will then proceed to registration.