Trade mark applications can be confusing, especially when those who wish to assert their Intellectual Property (‘IP’) rights, have prepared their application and performed their due diligence receive an adverse finding report three to six months later by an IP Australia examiner.
To better understand the process undertaken by IP Australia examiners in assessing trade mark applications is to have a better opportunity of having an application accepted on the first attempt.
When trade mark applications are lodged, each application is allocated to an IP Australia examiner. The examiner is a delegate of the Registrar of Trade Marks. Applications are generally examined in the order they are filed, which usually occurs between three and six months after the application is filed.
During examination, the trade mark examiner is required to examine and report on:
- whether the application has been made in accordance with the Trade Marks Act (‘the Act’); and
- whether there are any grounds under the Act for rejection.
Compliance with the Act generally involves consideration of whether the application complies with the following:
- whether the goods and/or services have been correctly classified;
- whether the goods and/or services are described in an overbroad or ambiguous manner;
- the adequacy of the representation of the trade mark; and
- whether any claim for priority has been properly made.
If the four criteria above are satisfied the examiner will then assess any grounds for rejection. Under the Act, a trade mark application may be rejected for the following reasons:
- if the trade mark contains or consists of a sign that is not to be used as a trade mark. For example, a sign which is a representation of a flag or seal, of the Commonwealth or of a State or Territory of Australia (section 39);
- if the trade mark cannot be represented graphically. There should be no difficulty in graphically representing most types of marks as they have a physical form (section 40);
- if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons. (section 41);
- if the trade mark contains or consists of scandalous matter or its use would be contrary to law (section 42);
- if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion. For example, if the trade mark contained a geographical connotation but the products sold under the mark were not from that geographical area (section 43);
- if the applicant’s trade mark is substantially identical with or deceptively similar to an earlier mark registered in respect of similar goods or services (section 44).
If the examiner forms a reasonable belief that the application has not been made in accordance with the Act or there are grounds for rejecting the application, the examiner will issue an adverse findings report identifying the issues with the application. The applicant will then have 15 months from the date of the adverse report to amend the application and/or persuade the examiner to accept the application otherwise the application will lapse.
If the examiner does not think there are grounds for rejecting the application, it will proceed to acceptance and will be advertised in the Official Journal of Trade Marks.