What to Do if Your Trademark Gets Rejected in Australia
Alright, so you’ve got a killer brand name.
You’re already imagining it plastered on billboards, showing up in Google searches, making its way to the top of people’s minds.
You go through the trademark application process, maybe you’re even a bit nervous. But then, bam – your trademark application gets rejection. Your trademark just got shot down. Now what?
Here’s the good news: rejection often isn’t the end of the road. It’s just a detour.
I’ve seen countless businesses hit this roadblock, and the successful ones all have one thing in common – they don’t let a rejection stop them. They get strategic and use it as an opportunity to make their brand even stronger. Below are four crucial tips for how you can do the same:
Tip 1: Review the Examination Report Like a Hawk
When the Australian Trademarks Office rejects your trademark application, they send you an examination report.
This isn’t just a slap on the wrist – it’s a detailed breakdown of why they said “no.” Think of it as a treasure map. The X’s on the map are the objections, and your job is to navigate around them.
Understand the Objections
IP Australia doesn’t exactly explain their objections in the clearest language so it can be hard to make sense of the examination report.
That said, the most common reasons for trademark rejections in Australia fall into one of these two categories:
Similarity to Existing Marks: Maybe your mark resembles another trademark that was filed earlier. This might give rise to consumer confusion and the Australian Trademarks Examiner’s job is to prevent that.
Lack of Distinctiveness: Your mark might not be distinctive enough for your goods or services. E.g., APPLE is a very distinctive trademark for technology products, but it isn’t at all for the fruit.
Tip 2: Strategies for Overcoming Trademark Objections
This is where we roll up our sleeves.
Filing a response means addressing each objection head-on. There are a few strategies we can go about this, and often two or more are combined for maximal effect:
Written Submissions
A written submission is basically your rebuttal.
You’re telling IP Australia, “Hey, I see your point, but here’s why you should reconsider.”
This isn’t the time to be casual. You need to back up your arguments with evidence, legal precedents, or any data that shows why your trademark should be registered.
The goal? Make it clear your trademark is distinctive and won’t cause consumer confusion.
Evidence of Use
If you’re facing a distinctiveness objection, you can submit evidence that shows your trademark has become distinctive through use. Show off those sales numbers, your social media presence, or anything else that demonstrates your brand has extensive traction in your industry.
If your mark is similar to earlier-filed trademarks, a silver bullet you can fire is to prove you’ve been using your mark since before any of the cited marks. This would be like pouring cold water over the examiner’s objection.
Alternatively, even if you’ve been using your mark for quite some time alongside the cited marks, and there haven’t been instances of consumer confusion, you can submit evidence of this to persuade your trademarks examiner.
File an Application to Remove a Trademark
If you’re being blocked by a third party mark and can’t get around it, one last-ditch effort involves applying to remove that mark from the trademarks register.
If your research reveals that the mark is hasn’t been used at all in Australia for several years, this might be an avenue worth considering.
Be forewarned: this can start a contentious trademark opposition between you and that third party. The third party will have every right to defend their trademark and they might even start causing problems for your own trademark.
If you’re going to apply to remove a third party mark, you better be very confident that it hasn’t been used at all for several years.
Get a Letter of Consent
This one’s another last resort.
If you can’t get around the third party mark and it’s not vulnerable to being removed, you could consider reaching out and asking for them to provide consent.
That’s right, you might be reaching out to a competitor and begging them for a letter consenting to the registration and use of your trademark.
If you’re raising your eyebrows, you’d be right.
This can be treacherous terrain and we don’t advise making the trip unless all the stars align.
Even in the best case scenario if they are willing to provide consent, you might need to cough up some dough to make it worth their while.
Tip 3: Don’t Be Afraid to Get Help
There’s no shame in asking for help, especially when it’s your brand’s identity on the line.
A trademark attorney brings expertise and insight you might not have.
They know the ins and outs of IP Australia’s processes, they’ve seen rejections overturned, and they can tell you straight up if your trademark has legs.
How a Trademark Attorney Can Help
A good trademark attorney doesn’t just fill out forms – they craft a strategy. They can research precedents, draft a persuasive response, and save you the headache of navigating the legal maze on your own.
Don’t underestimate the value of a second set of eyes, especially if those eyes have been doing this for years.
Tip 4: Avoiding Rejection in the First Place
Want to save yourself the hassle? Start strong. Most rejections are avoidable if you take the right steps before applying. Here’s how to give yourself the best shot:
Conduct Comprehensive Trademark Searches
Before you even file, do a deep dive.
Check IP Australia’s database, search Google, social media platforms, domain names, and even do some informal market research.
Look for anything that could be remotely similar to your trademark.
If you’re not sure how to do this, an attorney can help. This simple step alone can save you thousands in application fees and rejection headaches.
Focus on Distinctive Branding
You don’t want a generic name. You want something that stands out.
Avoid overly descriptive words, and aim for something memorable.
The best trademarks are the ones that get people curious. Think about Apple. There’s nothing about the name “Apple” that says “tech” – but it’s unique and stands apart from everything else.
That’s what you want in a trademark. You don’t want something that consumers will easily forget or mistake for something else. You don’t want to be drowned out by other similar names or phrases in your market.
Work with an Attorney from Day One
If your brand is important to you, don’t skimp here.
Talk to an attorney before you even file. They’ll tell you if your mark has potential, if there are red flags, and what you can do to strengthen your application.
Make Rejection Your Fuel
Rejection stings.
But in the world of trademarks, it’s usually not a dead end.
Review the examination report, get creative, file a strong response, and, if you need to, get help.
The best brands don’t get built without a few roadblocks. They’re built when business owners push back.
So get out there and leave it all on the table.
