What do I do if I receive a trade mark adverse report from IP Australia?

Author: Ian Aldridge, Progressive Legal

Have you received an adverse examination report from IP Australia after filing your trade mark application? You’re not alone; many applicants are unsure about what a trade mark adverse report means, why it was issued, or how to respond within the deadlines.

On this page, we’ll explain in plain English:

• What a trade mark adverse report is
• The most common objections raised by IP Australia
• Your deadlines and extension options
• Practical steps to overcome objections and keep your application moving

If you’ve received a trade mark adverse report and feel uncertain about what to do next, this guide will give you clarity and show you how our team can help protect your brand.

What is a trade mark adverse report?

Once your trade mark application is filed, it then runs through an examination process by IP Australia.

If the examiner believes there are legal grounds to reject your application, you’ll receive what’s called an Adverse Examination Report (sometimes also referred to as a “trademark office action” in the US).

The most common objections raised are:

• Your trade mark conflicts with a trade mark already on the trade mark register
• Your trade mark is not sufficiently distinctive (e.g. it’s too descriptive or generic).
• Your trade mark is likely to mislead or confuse consumers.
• Your trade mark is contrary to law or scandalous.

You usually have 15 months from the date of the Adverse Report to respond to those objections for your application to be accepted, and quite often, there are options to overcome the objections, so don’t write off your application just yet. You can read more about trade mark infringment here.

At Progressive Legal, we regularly deal with IP Australia examiners and help clients successfully respond to trade mark adverse reports. Feel free to get in touch with us, and we’ll give you our advice as to the options, prospects of success and costs for dealing with those objections. If you’ve received one, don’t give up, there are often multiple strategies to move your application forward. All you have to do is enquire below.

Can I apply for an extension of time to overcome the objections in the report?

Generally, a trade mark applicant is given 15 months from the date of the first adverse examination report to submit any evidence or make amendments to overcome the objections raised. These 15 months is often referred to as the final date for acceptance.

We understand that sometimes deadlines are missed and the acceptance date lapses (that is, the deadline to respond to the examination report passes).

However, you can apply for an extension of time to try to overcome the objections and progress the trade mark to registration. To do this, you need to submit the approved IP Australia extension form and pay a government fee of $100 for each month you wish to extend.

Generally, if you apply for an extension of time within the 6 months immediately following the trade mark’s final date for acceptance, IP Australia will grant the extension.

If more than 21 months have passed since the first examination report was issued, you will need to provide a statutory declaration setting out the reasons for the delay and why the extension should be granted (this is known as a s224 extension).

It is important to note that any evidence or correspondence provided to IP Australia to overcome any objections raised in the examination report needs to be submitted at least 20 days before the trade mark’s final date for acceptance.

Progressive Legal – Expert advice in dealing with a trade mark adverse report

Don’t let an adverse examination report from IP Australia derail your trade mark application. At Progressive Legal, we specialise in responding to objections under sections 41, 43 and 44, negotiating with examiners, and guiding applicants through extensions of time where required.

Our experienced team of trade mark lawyers will explain your options, assess your prospects of success, and prepare the evidence or amendments needed to move your application forward. Whether you need to provide evidence of use, request an extension, or consider an appeal or hearing, we can advise you on the most cost-effective pathway.

If you’ve received a trade mark adverse report and want to protect your brand, get in touch today. Call us on 1800 820 083 or make an enquiry below to get clear, practical advice from trade mark experts.

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