When applying to register a trade mark in Australia, your application is examined by IP Australia to determine whether it complies with the requirements of the Trade Marks Act 1995 (Cth). If the examiner identifies issues that prevent the trade mark from proceeding to registration, the examiner will issue a formal examination report (commonly referred to as an Adverse Report).
An Adverse Report is not itself a refusal of the application, although it can ultimately lead to one if the objections are not overcome. Rather, it provides the applicant with an opportunity to address the examiner’s concerns before a final decision is made. The report sets out the specific reasons why the trade mark cannot currently be accepted and outlines the timeframe for responding. Applicants generally have up to 15 months from the date of the first Adverse Report to overcome the objections. During this time, multiple rounds of correspondence with IP Australia may occur before the application is either accepted or lapses.
The most common objections raised in an Adverse Report include:
- Lack of distinctiveness – where the trade mark is considered too descriptive or incapable of distinguishing the applicant’s goods or services from those of other traders. For example, words that merely describe the quality, purpose or characteristics of the goods or services may not be registrable.
- Conflict with an earlier trade mark – where the examiner considers the proposed trade mark to be substantially identical with, or deceptively similar to, an existing registered or pending trade mark covering similar goods or services, creating a likelihood of consumer confusion.
- Incorrect classification or specification – where the goods or services are incorrectly classified or described too broadly or ambiguously.
- Formal defects – where there are issues with the application itself, such as ownership details, the representation of the trade mark, or other formal requirements.
Receiving an Adverse Report does not necessarily mean the application will fail. Many objections can be overcome by providing legal submissions, amending the specification of goods or services, supplying evidence that the trade mark has acquired distinctiveness through use, or obtaining consent from the owner of an earlier trade mark where appropriate.
As every application is different, the appropriate response will depend on the specific objections raised. Seeking advice from a trade marks attorney or intellectual property lawyer can significantly improve the prospects of overcoming an Adverse Report and securing registration of your trade mark.
