Trade Mark Objections

Author: Ian Aldridge, Progressive Legal

Objections to your trade mark can either be made by IP Australia during the examination of your trade mark application, or by another trader during the trade mark process.

This article will help you understand some of the different types of objections you may come across during your trade mark application. 

How can I overcome a trade mark objection?

A lot of people simply give up when they receive an objection to their trade mark application. In many instances, we are able to overcome these objections or at the very least provide you with some advice about other combinations of trade marks you can file to at least obtain some protection for the trade mark.  

Sometimes, we find that the trade mark examiners have made a mistake, other times there are ways to obtain trade mark registration through some removal of certain classes of activities. Depending on the objection and the strength of it, we are sometimes able to overcome with trade mark submissions or evidence of use of the trade mark. We are highly skilled at negotiating with examiners in order to obtain as much protection for our clients as possible.  

We’re more than happy to have a chat with you and go through those options. The team collectively has dealt with over 1,000 trade mark objections.

Common trade mark objections during examination

When a trade mark examiner indicates any issues with your trade mark application, they will issue an adverse examination report during the examination stage. That trade mark adverse report will notify you of one or more objections to the acceptance of your trade mark.

These trade mark objections will need to be addressed before IP Australia can accept your trade mark for registration. Keep in mind there is still a 2 month period to allow others to object to your mark if it is accepted by IP Australia before final trade mark registration is granted – see more info below. 

In the world of trade marking, the 2 most common objections which can be raised by IP Australia when your trade mark application is examined are as follows:    

• Your trade mark is not available – the Examiner considers your trade mark to be identical or confusingly similar to an earlier trade mark already on the Australian Trade Marks Register; and 
• Your trade mark is not registrable – the Examiner considers your trade mark to be generic, common or descriptive and considers it likely that other traders will need to use this trade mark. 

There are many other grounds on which the Examiner can raise an objection, however, it is by far most common to receive one (or both) of the above. 

Trade mark objections by other traders

Once your trade mark is accepted, other traders are given the opportunity to object to your trade mark during a mandatory 2-month publication period of your acceptance. During this period, other traders can notify IP Australia that they intend to oppose your application. 

They will need to substantiate their reasons of opposing your application, and if they can establish one or more valid grounds for opposition, your trade mark will not proceed to registration. If you received a notice of opposition against your application, we strongly recommend seeking expert trade mark legal assistance as soon as possible.

Call us on 1800 820 083 or fill out the contact form on this page to get in touch with one of our experienced trade mark specialists today. 

Why get legal assistance with your trade mark application?

Have you not yet filed your trade mark? We can help you file your application in a way that minimises the risk of receiving an objection.  

Already received an objection? Don’t worry, this doesn’t necessarily mean your application will rejected as issues can often be resolved.  

You will need to prepare a response to the examination report. The type of response will vary depending on the objection. This could be: 

• submitting arguments against the examiner’s decision;  
• showing evidence of use; 
• seeking consent from the owner of an earlier trade mark; or 
• applying to remove a trade mark from the register. 

Our team of legal experts can advise you on your options and recommend a strategy to overcome any objections received, to help you achieve acceptance your trade mark.

Key Takeaways

It’s more common than you may think to receive an objection to your trade mark application. 

Are you considering filing a new trade mark application, or have you received any objections? Our experienced trade mark lawyers, attorneys and consultants can provide you with advice tailored to your specific needs to give your trade mark application the best chance of successfully achieving registration. 

What we can help you with

• Section 39 trade mark objection
• Section 40 trade mark objection
• Section 41 trade mark objection
• Section 42 trade mark objection
• Section 43 trade mark objection
• Section 44 trade mark objection

Need Trade Mark Help?

Please get in touch with us today via phone or the contact form on this page.

1800 820 083