Want your trade mark to proceed to registration, but you’ve received a Section 44 objection during examination of your trade mark in Australia?
It’s quite common to file a trade mark application and receive a report from IP Australia setting out reasons they don’t accept your trade mark straight away, and there are many ways to try to overcome a Section 44 objection.
What is a Section 44 Trademark Objection?
An objection based on Section 44 of the Trade Marks Act 1995 essentially means that IP Australia has located earlier trade marks already on the Australian Trade Marks Register that they consider the same or similar to yours, for the same or related goods or services (cited marks).
If IP Australia decides to raise this objection, they will send you a report and give you 15 months to bring your application in order for acceptance. During this timeframe, you have the opportunity to show the examiner that the circumstances do allow for acceptance of your trade mark.
How to overcome a Section 44 Trade Mark Objection?
Important to remember is that you’ve received a Section 44 objection, but not a rejection. There are several ways you can try to overcome this objection, even if you’ve only recently adopted your brand.
The type of response to a Section 44 objection could be:
- submitting arguments against the examiner’s decision;
- showing evidence of prior use, honest concurrent use or other circumstances;
- seeking consent from the owner of an earlier trade mark; or
- applying to remove an earlier trade mark from the register.
If one option is unsuccessful, it is possible to move onto the next option within the 15-month timeframe.
One of our trade mark experts can help you set up the best strategy for you, by reviewing the Section 44 objection you’ve received in the report and advising you of your options in terms of your best chances of success.
Need more time?
Do you need more time to resolve your Section 44 objection? You can request deferment of acceptance, which will basically ‘stop the clock’ on your 15-month deadline after you’ve received a Section 44 objection.
You can request deferment of your acceptance deadline with IP Australia for several reasons:
- One or more of the cited marks is pending;
- You are gathering evidence to show there has been prior use, honest concurrent use or other circumstances;
- You have filed an application for removal of one or more of the cited marks;
- One or more of the cited marks has not been renewed in time, but is in the 6-month grace period in which renewal is still possible; and
- You have taken action for rectification of the Trade Marks Register regarding one or more of the cited marks.
Trademark deferment
You can only request a trade mark deferment once for the same reason, but you can request deferment again if the first deferral ends and another reason applies to your situation.
Key Takeaways
It’s more common than you may think to receive a Section 44 objection to your trade mark application, and there’s lots of ways and time to try overcoming this objection.
Have you received a Section 44 objection, or are you considering filing your trade mark and would like advice whether a Section 44 objection can be expected and potentially avoided? Our experienced trade mark lawyers, attorneys and consultants can provide you with advice tailored to your specific needs and give your trade mark application the best chance of successfully achieving registration.
You can contact our team today on 1800 820 083 or by filling out the form on this page.
