How to Respond to an Australian Trademark Examination Report
After filing a trademark application in Australia, the application is examined by a trademarks examiner of IP Australia.
During examination, it is not uncommon to receive one or more “Examination Reports” which outline issues with the trademark application. You will have 15 months to address all the issues so that the trademark can be registered, though extensions of time can be applied for under certain circumstances.
While 15 months can sound like a long time, it can be quite time-consuming to prepare the material and evidence necessary to overcome more substantive objections, so be sure to act early. Failing to overcome all issues in time will cause your trademark application to lapse.
In this article, we will explore the most common issues trademark owners face during the examination process, along with practical steps for responding to those issues.
What Is a Trademark Examination Report?
A Trademark Examination Report is a formal communication from IP Australia detailing any problems or deficiencies identified with your trademark application. These can range from simple administrative errors to more complex legal objections regarding the trademark’s registrability. Receiving an Examination Report doesn’t mean the application will be rejected outright, but it does require a timely and thoughtful response.
Common Objections raised in Trademark Examination Reports
Australian Trademark Examination Reports generally raise two main types of objections:
Formalities Objections: These objections relate to administrative errors, such as improper classification of goods and services and other deficiencies in filing particulars. These types of objections are relatively straightforward to deal with and the Australian Trademarks Examiner listed on the Examination Report would be able to assist.
Substantive Objections: As the name suggests, these objections are more substantial in nature and they can be quite difficult, if not cumbersome, to overcome. The most common substantive objections include:
Lack of Distinctiveness: If the examiner believes your trademark is too generic or common, they may assert that it lacks the ability to distinguish your goods or services. For example, if your trademark for a hair salon is HAIRSTYLEZ, an examiner may raise an initial objection that your trademark is not sufficiently distinctive of salon-related services and that the trademark (and words like it) should be available for other traders to use.
Conflict with Earlier Trademarks: If the trademarks examiner finds an earlier-filed trademark that is similar to yours, they may object to your trademark application on the basis that if both trademarks were registered and used to their full extent, consumers might confuse the two trademarks with one another. (Imagine the confusion that might arise if there was another fast-food chain called MacDonalds!)
Responding to a Distinctiveness Objection
Under the Trade Marks Act 1995 (Cth), a trademark is considered distinctive if it is capable of distinguishing the applicant’s goods or services from those of other traders (s 41). The examiner may argue that the trademark lacks distinctiveness because:
It is a common word, phrase, or term used by other traders to describe similar goods or services.
It is descriptive of the characteristics, quality, purpose, or function of the goods or services.
It consists of words or symbols that have become common in the current marketplace or are devoid of any inherent distinctiveness.
For example, a trademark like FRESH BREAD for a bakery would likely be considered insufficiently distinctive, as these words directly describe the goods offered.
One of the most effective ways to overcome a distinctiveness objection is to demonstrate that your trademark has acquired distinctiveness through use. This involves submitting evidence that your trademark has enjoyed extensive and widespread use such that consumers have come to recognise your trademark as a trademark rather than a descriptor. Useful forms of evidence include:
Sales figures: Demonstrating the commercial success of goods or services sold under your trademark across a continuous time period (several years) can be very persuasive.
Advertising and marketing materials: Showing that the trademark has been heavily promoted in the marketplace, and the efforts made to educate consumers about the connection between the mark and the applicant (e.g., Google ad spend, brochures, television advertisements etc).
Media coverage and third-party references: Presenting articles, reviews, or testimonials that recognise the trademark as distinctive.
The goal is to prove that, contrary to the examiner’s initial view, your trademark has come to signify your goods or services in the minds of consumers, so as to have acquired distinctiveness through use.
Addressing Conflicts with Earlier Trademarks
This type of objection arises if the trademarks examiner believes that your trademark is substantially identical or deceptively similar to an earlier trademark and covers similar goods or services. To overcome this type of objection, one or more of the following strategies may be employed:
(a) Non-Similarity of Marks
You may submit legal arguments that your trademark is not substantially identical or deceptively similar to the earlier mark. This requires a careful, structured comparison of the marks, focusing on differences in appearance, sound, and meaning, as well as how these differences would be perceived and recalled by the relevant consumers. Reliance on case law to support your arguments can be instrumental. That said, it is not uncommon for examiners to maintain their objections in the face of arguments alone, and thus you may wish to supplement your arguments with additional factors, such as evidence of use.
(b) Different Goods or Services
If your trademark covers goods or services that are not similar to those covered by the earlier mark, this can form a strong basis for rebutting the objection. Australian law only prohibits similar trademarks if they are used in connection with similar goods or services that could confuse consumers. For example, a trademark for “ECHO” for electronic devices would not necessarily conflict with “ECHO” for agricultural tools if there is no overlap in the market.
(c) Evidence of Honest Concurrent Use
Under Section 44(3) of the Trade Marks Act, you can submit evidence that both your trademark and the earlier trademark have been used concurrently without consumer confusion. To establish honest concurrent use, you will need to provide evidence such as:
The length of time both marks have been used concurrently in Australia
The extent of your use (including sales, advertising, and reputation)
Any steps taken to distinguish your trademark from the earlier mark
Evidence that no consumer confusion has arisen during this period.
(d) Evidence of Prior Use
If you can show that you have been using your trademark in the course of trade prior to the filing date of the earlier mark, you may be able to overcome the objection and secure registration of your trademark. To rely on prior use, the evidence you submit must demonstrate that your trademark usage is:
Continuous: Your prior use should be ongoing, not sporadic or isolated.
Commercial: The use must have been in the course of trade (e.g., across the range of goods and services designated in your trademark application), not simply token or private use.
Within Australia: Evidence of use must have occurred within Australia.
(e) Consent from the Owner of the Earlier Trademark
Often as a last resort, you may seek consent from the owner of the earlier trademark. If they provide written consent to the registration of your mark, you can submit this to IP Australia as part of your response. Consent is often granted when the trademark owners believe there is no risk of confusion, either because of market differences or the nature of the respective goods or services. It is not uncommon for the trademark owner to be compensated for providing such consent.
(e) Removing the Earlier Trademark
Under certain circumstances, you may apply to remove the Earlier Trademark. This can be quite an involved and risky approach and we will discuss this in a separate article.
Outcomes After Responding to an Examination Report
After you submit your response, the examiner will review your arguments and any additional documentation. There are several potential outcomes:
Acceptance: If your response overcomes all objections, your trademark application will be accepted for registration.
Further Examination: The examiner may issue another Examination Report if they feel the initial objections have not been fully addressed. In this case, you will need to reassess your approach and respond again.
Receiving a Trademark Examination Report in Australia is a common part of the trademark application process, and it rarely means the end of the road for your application. By carefully addressing the issues raised and submitting a thoughtful, well-supported response, you can significantly improve the likelihood of your trademark being registered. Whether you’re dealing with a formalities issue or more substantive objections, working with an Australian trademarks attorney can maximise your chances of success.
