Section 41 trade mark objection

An objection raised by IP Australia under section 41 of the Trade Marks Act 1995 means that there is an issue with the applied trade mark being capable of distinguishing your goods and services from others.

It essentially means that IP Australia considers it lacks capacity to distinguish as your badge of origin, or as an indication of trade source.

To overcome an objection under Section 41(3) or Section 41(4), you’ll need to submit a declaration to IP Australia showing evidence that you’ve used your trade mark in a way that’s capable of distinguishing your goods or services from other traders.

Evidence should include at a minimum:

Date of first use of the trade mark
Nature and extent of the use of the trade mark in Australia and elsewhere
Details regarding any advertising and promotion in relation to the trade mark (including amounts of expenditure)
Where the trade mark has not yet been used, any facts and circumstances demonstrating intent to use the trade mark

Contact Us

Descriptive words

Descriptive words are generally not able to be trade marked. However, some words can be in certain contexts. For example:

The use of the word APPLE in relation to the sale of apples as fruits would be required by other traders of apples but the use of the word APPLE in relation to the sale of computers would not be required by traders or computers.

Therefore, the word APPLE would not be registrable in relation to fruits but would be in relation to computers.

Trade marks inherently adapted to distinguish

The following are examples of words and phrases that IP Australia generally considers to be inherently adapted to distinguish:

Uncommon surnames (for example, not JONES or SMITH).
Coined words (such as SURELOCK or CLICKFAST)
Uncommon expressions in respect of the goods or services (such as OFF THE WALL for clothing or THE COOL CONDITIONERS for agricultural products)
Unlikely grammatical constructions (such as SHOPRITE or BI-LO)

Slogans with only an indirect reference to the product (such as COLOUR ME BEAUTIFUL for cosmetics)

It’s usually best to contact the particular examiner in order to discuss how much evidence of use would be required and consider the likelihood of success.

We specialise in discussing these matters with IP Australia and have developed a good feel for the prospects of success in this area.

Section 41 trade mark objection