How to respond to an adverse trademark application

As a business owner you know how important it is to protect your brand.

But what happens after you have submitted a trademark registration application to IP Australia and you receive a letter stating there are problems with your application?

If your trademark application has been deemed unfit for registration, an IP Australia examiner will specify the grounds for the rejection.

The team at Quick Off the Mark® have years of experience dealing with adverse reports relating to trademark applications and suggest the following.

 

1 Understand the type of objection raised

Whilst there a number of grounds for trademark rejection, there are two that we see most often:

1.    The trademark in question is not distinctive or it consists of a common or generic term (section 41)

2.    The trademark in question is identical or confusingly similar to  an earlier filed trademark (section 44)

In the letter you receive from IP Australia there should be instructions on how you might be able to resolve the issues.

Substantive objections can be more difficult to resolve and, as noted above, are often derived from section 41 and section 44 of the Trade Marks Act 1995.

If your application is considered adverse because of section 41, it indicates the IP Australia examiner believes your trademark is not sufficiently distinctive in relation to the claimed goods and/or services.

If your application is considered adverse because of section 44, it indicates the IP Australia examiner believes there are pending and/or registered trademarks that conflict with your trademark.

2 How to deal with adverse reports for non-distinctive trademarks

By definition a trademark is a sign that is used to indicate one trader’s goods or services from the similar goods or services of other traders. Therefore it will be more difficult to register if your trademark is not capable of distinguishing your goods/services in this manner.

A trademark will be considered eligible for registration by IP Australia based on its ‘strength’. The more distinctive a trademark is, the stronger and more defendable it will be. If a trademark is not considered to be distinctive it may be deemed as too weak to be registered.

However, if you can prove that through the use made of that ‘weaker’ sign that it has become synonymous with your goods/services, or that through continued use it will ultimately be able to distinguish your goods/services from others in the marketplace, you may be able to overcome this sort of objection.

A strong mark that includes unique and memorable words can be classed as ‘inherently distinctive’, allowing it to avoid section 41 objections. Examples of these types of marks include Apple, Polaroid and Ford Mustang. Logo marks, even when incorporating seemingly descriptive or generic terms may also be found inherently distinctive.

It is hard to predict what IP Australia will consider to be a weak trademark that triggers a section 41 issue. The question to ask yourself is:

“Is it likely other traders will have genuine need to use the same or very similar trademark in connection with their similar activities to mine?”  

If the answer is yes, it is likely others will have a genuine need to use the same name for the same sorts of goods/services then it is more likely you will receive an adverse report under section 41.

3 How to deal with an adverse report for generic terms

If you try to register a common, descriptive or generic term with IP Australia (in connection with the usual goods or services that the term would be associated with) your application will likely be rejected and you will receive an adverse report. Again, we use Apple as an example.

When seeking to register Apple in relation to computers, software, mp3 players and the like the term is found to be inherently distinctive. If a trader was to apply to register Apple as a trademark in respect of fresh fruit it would be considered descriptive.

IP Australia cannot easily grant trademark protection to generic or common terms because it would result in one business having a monopoly over that term and could potentially deny all other businesses the right to refer to this term in respect of the usually associated goods/services.

For example, a mark such as “Melbourne Hairdressers”, filed in respect of hairdressing goods or services would struggle to register, as other traders in the hairdressing business would have genuine need to use this term for those activities. It would be unfair for one business to have an exclusive right to the use of such a descriptive term.

4 How to deal with adverse reports for similar trademarks

If you have submitted an application to IP Australia to register a trademark that resembles or is identical to an earlier filed trademark that has been filed to cover similar goods or services to yours, you may receive an adverse report.

This report is issued to prevent consumers from being confused by similar marks when used in the market place. If your mark is similar to other marks but the goods/services are unrelated you will be unlikely to infringe the rights of the other holder.

For example, if you wanted to register your trademark for skin care and a similar mark was used for building supplies, you would unlikely be infringing on the rights of this holder.

In Australian trademark law, the ‘likelihood of confusion’ is a foundation. Your IP Australia examiner looks at every factor that can be taken into account with the likelihood of confusion. These factors include but are not limited to the similarity of the mark itself, the type of goods/services, and whether confusion has already happened.

If you receive an adverse report under section 44 of the Trade Marks Act, you may be able to respond to the report and overcome the issue of similar marks filed before. The options are varied but may include amendments to your goods/services to remove any overlap with earlier filed marks and can include the filing of evidence of use to demonstrate either a prior use of your mark or an honest and concurrent use of your mark in the marketplace against any existing trademark.

5 How to respond to an adverse trademark registration report

If you have been issued with an adverse report from IP Australia it does not usually mean that your application has been automatically rejected. The report you receive will outline the grounds of objection and gives you the opportunity to dispute or remedy them.

You have 15 months from the issue date of this report to bring your application into order for approval by IP Australia. If your application is not accepted by that time the application will lapse or you will be required to pay extension of time fees to keep it from lapsing.

Also keep in mind that the examiner will require at least 4 weeks prior to your due date to consider your response. Quick Off the Mark® encourages clients to reply to their reports sooner rather than later in this 15 month period.

If you receive an objection to your trademark application, Quick Off the Mark® believes it is important to take time to understand why this has happened.

In many cases, business owners have invested years of time, money and effort with their branding. As noted above, when an objection is raised, you will have 15 months to respond and overcome the issues.

During this time, we suggest that you explore the strength of the objection and if appropriate, develop a strategy to overcome it. Do not simply ‘give up’ as there are often options to address these issues, even if those options are not discussed in your IP Australia report.

When you respond to your adverse report one of the two points below will ensue:

1.    If your response does not overcome all of the objections raised by your IP Australia examiner, a further adverse report will be issued to maintain the object. You will have an opportunity to respond to further reports, however, note the 15 month response time frame does not extend with each report.

2.    If your response overcomes all objections, your trademark application will be approved. Once this trademark application has been advertised as accepted for registration, it will undergo a two-month period of opposition, in which any other person can object to your registration on the grounds provided for in the Act. When you pass through this period without opposition, your trademark will be registered and you will gain the rights of a registered trademark holder.

If you need help with this process, Quick Off the Mark® can help.

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