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How to deal with an Adverse Trade Mark Examination Report

10 July 2020 Last Updated: 28 January 2021

If you have filed a trade mark application in Australia, chances are you may receive an Adverse Examination Report.

Many trade mark applicants give up at this point, but with the right advice, and maybe some amendments or submissions, it may still be possible to successfully register your trade mark.

If you need help with an existing trade mark application, or if you are thinking of filing a new trade mark application, please contact us for further advice.

In this post, we look at the trade mark examination process, some of the common issues raised by Trade Mark Examiners, and how they can be resolved.

Trade Mark Examination FAQs

What is Trade Mark Examination?

When you apply for registration of a trade mark in Australia, your application will be examined by IP Australia. Every trade mark application must pass Examination before it can be registered in Australia.

The legal requirements for trade mark registration include:

  1. Your trade mark must be sufficiently distinctive - it's harder to register a trade mark that describes the goods or services you're offering;
  2. The goods and services listed in your application must be categorised into the correct classes;
  3. The goods and services must also be sufficiently specific - broad claims such as "all goods" are not allowed, and sometimes ambiguities or interpretation may need to be resolved (such as where goods or services are identified using words that can have two or more meanings);
  4. Your trade mark must not be substantially identical or deceptively similar to other existing trade marks that cover similar goods or services;
  5. Your trade mark must not contain a prohibited sign (such as the Australian Coat of Arms or Olympic insignia), a restricted word (eg the word "BANK" is restricted in respect of financial services) and must not be offensive, scandalous or contrary to law (eg some strong expletives and derogatory terms are considered offensive);
  6. The details of your application, such as the identity of the applicant, must be correct.

When does Examination happen?

In most standard applications, Examination is completed between 3 and 5 months after the filing date of your application.

Your application may be examined sooner, depending on the workload at IP Australia or if you've filed a Headstart Request, TM Assist application or an expedited application.

What is an Adverse Examination Report?

An Adverse Examination Report is issued by the Trade Mark Examiner if they identify any issues with your application.

How do I get a copy of the Adverse Examination Report?

You can download a copy of the Adverse Examination Report in PDF from the IP Australia Online Portal (or the legacy eServices Platform).

IP Australia does not send copies of the Report directly via email. However, you should receive an email notification from IP Australia telling you that you have new correspondence in your IP Australia Online Portal Account.

To access the Examination Report, simply login to the Online Portal. If you have not yet read the Report, it will be displayed on the Dashboard screen as an unread inbox item. If you have already marked the Report as read, you will need to navigate to your Inbox to download it.

Note that IP Australia does not retain correspondence items indefinitely - so we strongly recommend that you download and save your own copy of the Report. If you intend to seek professional advice, your chosen adviser will likely ask you for a copy of the Report.

If you cannot access the Online Portal, you can also request a copy by calling IP Australia or contacting the representative (if any) listed as the Address for Service for your trade mark.

Is in an Adverse Examination Report made public?

No, the content of the Report is not generally available to the public. However, it is possible to apply to obtain a copy of an Adverse Examination Report for a trade mark through IP Australia.

IP Australia's online trade mark database for your trade mark will show the following information:

  1. Your trade mark's Status will be displayed as: "Published: Under examination"
  2. The timeline in the left column will show "Application Being Considered", along with dates for the First Report and an Acceptance Due date (also known as the Deadline for Acceptance. These are also shown under the Dates heading in the right-hand column;
  3. In the History & Publications section of your online trade mark details, the following item will appear: "Adverse Report (Examination) correspondence sent"
A screenshot of an Australian trade mark showing Under Examination status
A screenshot of an Australian trade mark showing Under Examination status

Of course, the information published in IP Australia's database is publicly available to anyone who searches the database.

What is in the Adverse Examination Report?

The Report will outline the issues that have been identified with your trade mark application.

The Examiner may also make some suggestions as to how you can resolve the issues, and you'll be given the Examiner's contact number so you can call them to discuss the Examination Report.

(Note: The trade mark examiner can explain their objections and generally assist you with the trade mark process. However, they cannot give you legal, strategic or business advice. They also can't help you to draft your response or gather any evidence. If you need help, we recommend that you seek professional advice.)

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

Under Australian law, the deadline for acceptance is 15 months from the date the first Examination Report is issued. The Deadline date is shown in the Report.

While this deadline can seem generous, you must resolve all of the issues raised in the Examination Report by this deadline. The time period includes the time you take to prepare and file your response as well as the time it takes the Examiner to consider your response.

In some cases, your first response to an Examination Report may not be sufficient to overcome the issues.

It's important to seek advice and begin developing your response as quickly as possible.

Can I get an Extension of Time or Deferment?

Extensions of Time can be requested, however, usually a fee is payable for each extension of time. There is also a maximum limit on the number of extensions of time that can be requested.

Deferment (pausing of the deadline for acceptance) may be possible in some circumstances. This is normally available in cases where a conflicting trade mark is not yet registered, has expired, or is under removal, opposition or court proceedings. Generally, deferment lasts until the relevant cause is resolved.

Some Common Trade Mark Application Examination Issues

The following are some examples of common issues raised by Examiners in Adverse Examination Reports. It is important to read the Examination Report carefully to understand the nature of the Examiner's objections and what strategies may be appropriate to resolve them.

My Trade Mark is Similar to Another Existing Trade Mark (Section 44 Objection)

This issue commonly occurs when there is an existing trade mark that is sufficiently similar to the trade mark in the application.

The examiner will consider both:

  • the similarities between the trade marks themselves; and
  • the goods or services for which each trade mark is registered or applied for

The fundamental question asked is:

"Would an ordinary consumer be confused between the two trade marks?"

If the answer is "Yes", then it's likely an issue will be raised.

(Note that comparison is made using what is recorded on the trade mark register - rather than considering what use the existing trade mark owner is actually making of the trade mark. Also, the existing trade mark does not have to be fully registered to be an obstacle to your application.)

There are a range of ways to deal with an existing similar trade mark, such as providing evidence that you have used your trade mark prior to or concurrently with the existing trade mark.

The best strategy will depend on the particular case, so we recommend that you seek advice for assistance in developing your response strategy.

My Trade Mark is Descriptive (Lack of Distinctiveness) (Section 41 Objection)

This issue is usually raised when the trade mark application contains one or more words that:

  • describe the goods or services included in the application - for example "COMPUTERS" where the trade mark application is for computer hardware or software;
  • are generic terms or "terms of art" in a particular industry;
  • refer to a geographic location - for example: "BRISBANE";
  • refer to quantity or quality - for example: "PRECISION";
  • are a common surname - for example: "SMITH" or "JONES".

Where lack of distinctiveness is raised as an issue, the trade mark applicant will usually need to provide evidence of how the trade mark has been used, in order to show that the trade mark has acquired reputation and recognition in Australia. The amount of evidence needed will vary depending on how descriptive the trade mark is.

Preparing formal evidence of use can be time consuming and difficult, so we recommend that you seek advice before beginning this task.

My Goods or Services are not Correct

This issue can be raised when:

  • the goods or services are too vague or confusing - for example: where the words used have more than one potential interpretation, the correct classification may need to be clarified;
  • an incorrect class number is selected - for example: applying for "shoes" (Class 25) in the trade mark class for medical products (Class 10).

Trade marks rely upon a specification of goods and services, and correct classification, to define the scope of protection of a trade mark and enable it to be compared with other trade marks.

If the trade mark specification is poorly worded, or incorrectly classified, it may be confusing to consumers and other traders.

When correcting specification or classification errors, care must be taken to ensure that the amendment does not inadvertently reduce or alter the scope of protection. It is also not possible to amend the specification to increase the scope of protection above what was originally filed.

Sometimes a fee may be payable to add additional classes to the application. This occurs when goods or services are transferred from one class, to a new class that was not originally included in the application when filed.

Generally, we recommend that you seek advice before making significant amendments to the specification or classification your trade mark application.

Incorrect Applicant Details

A common mistake is to incorrectly complete the trade mark application form.

For example, a trade mark can only be owned by a legal entity - which means you can't file an application under:

  • a trust - unless the trustee is correctly identified; or
  • a business name or trading name - unless the business name holder is correctly identified.

In many cases, identification errors can be simply corrected by providing evidence of the correct identity of the applicant.

How Xuveo Legal Can Help

An adverse Examination Report is not necessarily the end of your application. With the right advice, and a good strategy, many issues with an application can be successfully resolved.

It is recommended to seek professional advice so that you understand the implications of the Examination Report. A professional advisor can also assist you in strategising, preparing and submitting a response in the correct format.

Xuveo Legal is experienced at filing and managing trade mark applications, including dealing with trade mark examination objections.

We take a practical approach to preventing and resolving trade mark examination issues.

Contact Us today to see how we can assist you with your trade mark application!

This post is intended for general information only and is not intended to constitute legal advice. You should obtain appropriate professional advice for your circumstances or contact us for further assistance.
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