By Sophie Pemberton
When you file a trade mark application, an examiner from IP Australia will assess whether your trade mark is fit for registration. If the examiner does not accept your application for trade mark registration, you will receive an adverse examination report detailing the reasons for objecting to your application. Some of the most common grounds for objection are that your trade mark:
- lacks distinctiveness;
- contains generic or descriptive terms relative to the goods and services covered by the application; or
- is substantially identical or confusingly similar to another registered trade mark or pending trade mark application.
This article will discuss why your trade mark application may be rejected and how you can rectify the problems identified in the adverse examination report.
Reasons Why You May Have Received an Adverse Report
Lack of Distinctiveness
To be eligible for trade mark registration, your trade mark must be capable of distinguishing your goods and/or services in the marketplace. For instance, the more unique your trade mark is, the greater chance that your trade mark is distinct and memorable to consumers. It will also be easier to allege trade mark infringement if a competitor uses the same or similar trade mark to yours.
If your trade mark lacks distinctiveness, it may not be registrable unless you can demonstrate extensive evidence of use. This will illustrate that your trade mark has become a recognisable badge of origin of your business.
A trade mark with “strong” distinctiveness might feature invented words or words that bear no connection to your goods and/or services. For example:
- “Polaroid” is an invented word that has now become a distinct and recognisable trade mark; and
- “Apple” is a word that was originally unrelated to electronic goods.
Both trade marks are memorable and considered ‘inherently distinctive’.
A trade mark that is likely to receive a refusal on this basis will usually include descriptive or generic terms. This is because IP Australia is likely to decide that these types of terms should be kept freely available for all traders to use without risk of infringement. An exception to this is where a trade mark has essentially adopted a secondary meaning through extensive use and promotion. Provided you can prove that consumers associate the trade mark with your product or service, despite its non-distinctiveness, it may still be possible to achieve registration.
An examiner may believe your trade mark contains a generic word that traders should be able to use freely. In this case, they will usually issue an adverse report on the same grounds as a non-distinctiveness objection. Generic terms describe the product or services that your trade mark covers. For example, a trade mark application for “Computer” will be rejected where the goods you offer under this trade mark are computers or electronic devices. IP Australia will not unfairly prevent other traders from being able to describe their goods and services properly.
However, it is possible to include generic terms within your trade mark, as long as other distinctive elements accompany them. For example, if you run a software development business, you would be unable to register the trade mark “Software”. Still, you may consider including completely unrelated and unique terms in your trade mark to make it memorable in the minds of consumers, for example “Xylophone Software”.
Substantially Identical or Deceptively Similar Trade Marks
You will likely receive an adverse examination report if you attempt to register a similar or identical trade mark to another registered or pending trade mark, covering the same or similar goods and services. The purpose of trade mark protection is to prevent other traders from being able to use identical or deceptively similar trade marks to your own.
Importantly, identical trade marks can coexist for different goods and services. This is how Dove chocolate and Dove soap can coexist without infringing upon the other’s trade mark registration. Consumers are unlikely to believe these entirely different goods come from the same source.
Examiners take many different considerations into account when determining the likelihood of confusion. For example, the examiner will compare your trade marks. They will assess based on the degree of similarity between the trade marks themselves and the goods or services they pertain to,.
How to Respond to an Adverse Report
An adverse report does not necessarily signal the end of the road for your trade mark application. Adverse examination reports simply indicate why your application cannot be accepted in its current state. Then, you are provided with 15 months to address these issues and remedy them for your application to proceed to acceptance. The most appropriate response will depend upon the reason for the refusal, how long you have been using your trade mark, and other considerations. For example, depending on the issues raised, you may take steps to:
- amend the goods and services you claim in your application;
- submit evidence of your use of your trade mark; or
- seek consent from other conflicting trade mark owners.
Responding to an adverse report effectively and with conviction can be complex. We recommend engaging the help of a trade mark lawyer at this stage.
Your trade mark application may receive an adverse report when a trade mark examiner decides there are obstacles to your application that you must overcome before IP Australia accepts it. It is fairly common to receive an adverse report. This is because your application will need to meet several different requirements for registration.
If you have received an adverse report and need assistance with responding, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1800 534 315 or visit our membership page.