Filing your own trade mark application with IP Australia is a common starting point for Australian businesses wanting to protect their brand on a budget. But for many self-filers, the process hits an unexpected wall: an “adverse examination report” arrives in your inbox, full of legal references and very little plain English.<\/p>\n
If that’s where you are right now, you’re not alone, and your application is not necessarily doomed. What it does mean is that you are now in a technical, time-sensitive process that business owners are often not equipped to handle alone.<\/p>\n
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After you file a trade mark application, IP Australia examines that application against the requirements of the\u00a0Trade Marks Act 1995<\/em>\u00a0(Cth). If the examiner identifies issues that prevent your application from being accepted for registration, they will issue an examination report, commonly called an adverse report, setting out the legal grounds for the objection(s).<\/p>\n The report will typically cite specific sections of the Trade Marks Act<\/em> and explain, from the examiner’s perspective, why your mark cannot be accepted in its current form. It is a legal document, and responding to it requires more than just filling in a reply field online.<\/p>\n Your application remains alive while objections are unresolved. However, if those objections are not dealt with effectively within the allowed timeframe, the application will lapse, and you will lose the priority date that came with your original filing – as well as your filing fees.<\/p>\n <\/p>\n There is a 15-month acceptance deadline that runs from the date of the first adverse report. By that date, all outstanding objections must be resolved to the examiner’s satisfaction and the application accepted, it is not simply a deadline to send a reply.<\/p>\n Limited extensions of time are available but will incur additional fees. Therefore, if you are already partway through your \u201cacceptance window \u201cand have not yet responded, now is the time to move.<\/p>\n <\/p>\n Many adverse reports flag issues with how goods and services are described, wording that is too broad, too vague, or placed in the wrong class. How your specification is drafted affects not just whether your application proceeds, but the scope of any registered rights you may eventually obtain.<\/p>\n The description of goods and services cannot be expanded after the filing of the application and it is therefore important to adequately describe your goods\/services at the time of filing your application.<\/p>\n The whole purpose of a trade mark is to distinguish one trader\u2019s goods\/services from the similar goods\/services of another trader.\u00a0 Therefore, if you trade mark is not capable of distinguishing the goods\/services claimed in your application, a distinctiveness objection will be raised. For example, if your trade mark consists of a description of what you sell or the location of the source of the goods or where the services are provided, the examiner will likely contend that the trade mark is not capable of distinguishing your goods\/services.<\/p>\n These objections often turn on fine legal judgments about the degree of descriptiveness and the context in which your mark is used. They are not simply a matter of rewriting a word or two.<\/p>\n During examination, the examiner will conduct a thorough search of the Australian Trade Mark Register and will raise an objection against your application mark if your trade mark is substantially identical or deceptively similar to an earlier mark on the Register covering similar goods or services. Even marks that, at first glance, look quite different can attract these types of objections.\u00a0 The comparison of trade marks is not a simple side-by-side comparison, with the rules of comparison being determined by a mix of legislation and over 100 years of case law.<\/p>\n In addition to potentially constituting an obstacle to securing registration of your trade mark, the existence of a substantially identical or deceptively similar prior trade mark may constitute a material infringement risk. If the use of your trade mark infringes upon the rights of the owner of a prior registration, that owner could seek to sue you for trade mark infringement. A trade mark attorney can advise regarding the extent of any infringement risk.<\/p>\n In our experience, many of the objections raised against self-filed application could have been avoided by seeking advice from a trade mark attorney prior to filing. Often, applications are filed for marks which have very little prospect of meeting the distinctiveness requirements of the Trade Marks Act<\/em>, or which clearly conflict with trade marks already on the Register \u2013 such prior marks can usually be identified by having a trade mark attorney conduct trade mark searching prior to filing.\u00a0 Such searches are critical, not only for determining the potential prospects for securing registration, but also for avoiding trade mark infringement.<\/p>\n It is also not uncommon for us to find that applications filed by self-filers are inadequate in respect of their coverage in terms of the goods and services covered by the application, and sometimes, even the actual mark for which protection is sought.\u00a0 Additionally, ensuring the application is filed in the name of the correct legal entity is critical for ensuring valid legal rights.\u00a0 These are all issues that would be considered and advised upon in a consultation with a trade mark attorney.<\/p>\n <\/p>\n There are generally several possible responses to an adverse examination report. Which ones are available, and which are worth pursuing, depends entirely on the specific grounds raised, the mark itself, and possibly, the extent to which you have already used your trade mark.<\/p>\n The most common pathways typically involve some combination of:<\/p>\n There are other possible avenues for attempting to overcome objections such as entering into negotiations with the owners of prior marks to obtain consent, taking action to have prior marks removed from the Register for non-use or formally opposing the registration of third-party marks.<\/p>\n What the right approach looks like for your application is not something that can be determined from a general guide. A trade mark attorney will consider all of the available options and will consider the best path forward having regard both to prospects any cost restraints.<\/p>\n <\/p>\n If your application lapses, you lose the benefit of your original filing date. You would need to file a fresh application, which means:<\/p>\n For businesses where the brand is central to marketing, client recognition or future licensing or the sale of the business, losing a trade mark filing can be a material commercial risk.<\/p>\n <\/p>\n If you self-filed because you wanted to manage costs, that makes complete sense. But the examination stage is a different kind of task. It involves interpreting legislation and IP Australia’s examination practice, understanding case law, making strategic decisions that affect the scope of your protection and meeting firm deadlines, all while running a business. Additionally, IP Australia (including the examiner) is not empowered to provide you with legal advice.<\/p>\n Our trade mark team at James & Wells works with local businesses at exactly this stage. We regularly assist clients who started with self-filed applications and now need a clear plan and expert execution to protect the brand they’ve built.<\/p>\n We can:<\/p>\nWhat are the time limits?<\/strong><\/h5>\n
Common Objections<\/strong><\/h5>\n
Problems with your description of goods and services<\/strong><\/h6>\n
Trade mark not distinctive<\/strong><\/h6>\n
Your mark is too close to an existing registration<\/strong><\/h6>\n
Why do many self-filed trade marks attract objections?<\/strong><\/h6>\n
What are the options when you receive an objection?<\/strong><\/h5>\n
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What happens if the objection isn’t resolved in time?<\/strong><\/h5>\n
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Why this is the moment to speak to a trade mark professional<\/strong><\/h5>\n