Trade mark registration provides an important benefit to trade mark owners. It gives the owner the right to take action against another business using a similar mark for similar goods and services.
Application process
Once an application is filed, registration is not automatic. Instead, a trade mark application goes through a process of “examination”, where an officer from the Trade Marks Office (TMO) at IP Australia (an Examiner) considers whether or not the mark should be registered. If the Examiner considers that your mark is registrable, it will receive an “early acceptance”.
There is then a delay because the TMO has to wait to see if any similar overseas application with priority over your application is filed. If not, your application will be accepted. Then anyone else (usually a business owning a similar mark) has a two month opportunity to “oppose” your application. This only happens in a small percentage of cases. If no one does this, your mark will be registered.
On the other hand, the Examiner may issue an “adverse examination report” which will set out any issues that you need to overcome if your mark is to be registered.
Main issues for applications
Two of the most common issues with trade mark applications are:
- Lack of ability to distinguish your goods or services from those of other businesses (too descriptive); and
- Conflict with an earlier application or registration for a similar mark for similar goods or services.
Distinctiveness
In order for a trade mark to be registrable, it must be capable of distinguishing your goods or services from the goods or services of other businesses (known as “distinctiveness”). A mark may have issues if it includes:
- a geographic term that could be the source of the goods or services;
- a common name; or
- a description of some characteristic of the goods or services.
The level of distinctiveness is on a sliding scale. On one extreme there are highly distinctive marks – words that do not directly refer to a characteristic of the goods or services eg APPLE for computers, or invented words such as KODAK for cameras.
On the other extreme there are marks that lack any distinctiveness, eg “Sydney Building Information Centre”, which has two problems. “Sydney” refers to the location of the business. “Building Information Centre” describes its services. This would be very difficult to register as a trade mark.
A distinctiveness objection will be based on one of two sections of the Trade Marks Act – section 41(4) (the lower test) or section 41(3) (the stricter test). You will see which section is relied upon by the Examiner near the bottom of the part of the Report that refers to section 41.
Citations
The Trade Marks Register is like an enormous queue. Earlier marks on the Register (pending or registered) have priority over later marks. If the Examiner considers that your mark is too similar to an earlier mark which covers similar goods or services, they will raise that mark against your application (called a “citation”).
Ways of overcoming an examination report
If you receive an adverse examination report on your trade mark application, all is not lost. It may be possible to overcome the Examiner’s objections. What to do depends on the nature of the objection.
Options without having to file evidence with the TMO
Submissions
A first option may be to argue the point – trying to persuade the Examiner eg that the mark is not directly descriptive of your goods or services or that your mark is not too similar to the cited mark.
Change the description of your goods or services
It may be possible to remove some goods or services from your application to try to avoid a conflict with the earlier mark. But be careful about this if you really want to use your mark on these goods or services.
Seeking consent
Alternatively, you may wish to seek the consent of the conflicting owner to allow your mark to be registered, although it is always possible that they may say “no”. It may be better to try a different option to overcome the Examiner’s objection first.
Evidence
Sometimes you can file evidence with the TMO to support your argument. This is done by way of one or more signed declarations.
Distinctiveness evidence
If the Examiner says that your mark is too descriptive, you will need to show that your mark has come to mean your goods or services to consumers, not just that it describes those types of goods or services.
You will need to provide sales and advertising figures (usually claimed to be confidential) to show the length of time and volume of sales and the reputation of your mark. The declaration(s) will also attach examples of use of your mark, eg on websites (including historical images from the Wayback Machine) and on promotional material as well as photos of your goods and/or signage.
Earlier marks
If the Examiner says that there is a conflict with an earlier mark, evidence could show that you first used your mark before the “priority date” of the earlier mark (usually its filing date) and that you have used your mark continuously since then (with examples of use as set out above).
Alternatively, even if you started using your mark after the other mark’s priority date but before you filed your application, you may be able to establish that you have been using your mark for a substantial period to a substantial extent (area and volume) at the same time as the earlier mark. Your declaration will need to state whether you were already aware of the other mark when you started to use your mark, and if not, you will need to show what checks you made of the Trade Marks Register and the Internet before adopting your mark. The extent of your use in terms of sales and advertising figures and evidence about how you have used your mark must also be provided.
Conclusion
If you can supply persuasive arguments and/or evidence you may be able to overcome an Examiner’s objections and achieve registration of your trade mark.
Trade mark registration is a valuable right which can be used to protect your business from competitors using marks that are too similar to your mark on similar goods or services. The registration also acts as a “silent cop” warning off competitors who search the Trade Marks Register. The registration can be sold or licensed and so generate revenue for your business.
If you receive an adverse examination report don’t assume that this is the end of your application. It is worthwhile seeking professional advice as to whether you would be able to overcome the Examiner’s objections. Experienced trade mark professionals know trade marks law and are familiar with the requirements of the Trade Marks Office and can give you the best chance of protecting your brand.
I can advise on Examiners’ Reports. I can also take away the hassle of applying for trade mark registration and dealing with the TMO by filing and prosecuting trade mark applications on your behalf.
This blog provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a trade marks professional if you have any particular questions.
Liability limited by a scheme approved under Professional Standards Legislation
© Margaret Ryan, Melbourne, Australia, 2025