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Trade mark examiner adverse reports – not necessarily fatal to your application

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After a trade mark application is filed it is examined by a Trade Mark Examiner, all trade mark applicants hope to get a “clear” Examination Report. This enables the application to be advertised as accepted. However, many applicants receive an Examiner’s “adverse report”, leaving some to think the application is “dead in the water” (not automatically true) and others wondering what to do next.

The first thing to remember is that it may be possible to make submissions to IP Australia to overcome the Examiner’s adverse report. Before submissions, applicants often choose to have a review carried out by trade mark attorneys or lawyers specialising in trade mark law. If there are reasonable prospects, the applicant may instruct the professionals to draft and file submissions. The content of submissions varies depending on the objections raised by an Examiner in the adverse report.

So, what objections might an Examiner raise? Objections often stem from section 41 and/or 44 of the Trade Marks Act 1995 (Cth) (TMA):

Typical objection – lack of distinctiveness (s41, TMA): Here, the Examiner assesses that the mark is incapable of distinguishing the applicant’s goods/services from those of other traders (for example, attempting to register the word BIKE for bicycles). For an s41 objection, suitable submissions generally include:

• Legal submissions relating to the extent to which the trade mark is inherently adapted to distinguish the designated goods/services;

• Evidence in the form of statutory declarations attesting to the use (and depending on facts, the intended use) of the trade mark by the applicant; and

• Legal submissions relating to any other relevant circumstances.

Typical objection – conflict with certain pre-existing marks (s44,TMA): Here, the Examiner assesses that the mark is substantially identical or deceptively similar to an earlier registered mark (or application) and registered (or applied for) in respect of similar or closely related goods/ services. For an s44 objection, suitable submissions generally include:

• Legal submissions that the marks in question are not substantially identical or deceptively similar and/or there are no conflicting goods / services; and/or

• Legal submissions and associated evidence to show prior user or honest concurrent use; and/or

• Enclosing a letter of consent from the proprietor(s) of the conflictingmark(s).

At ARETE Group, our team includes specialist trade mark lawyers, registered trade mark attorneys and a former trade mark examiner. We can provide you with a free of charge and no obligation preliminary assessment of prospects of overcoming an Examiner’s adverse report. We can also provide more detailed advice and draft suitable submissions.

We have extensive experience in drafting submissions to trade mark Examiners and often act for law firms (on an agency basis) who require specialist trade mark expertise for their clients. For further information or if we can assist, contact Shaun Creighton

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