The following Decision by the Delegate serves as a reminder that in general, film titles will not function as trade marks.
After an Australian trade mark application is submitted to IP Australia, the trade mark proceeds to examination by the examiner, who is a delegate of the Trade Mark Commissioner.
The job of the trade mark examiner is to assess the application to check whether the requirements for trade mark registration are fulfilled. The main areas of review are:
If all legislative requirements are met, the mark will proceed to acceptance; otherwise, the Office will send details of the objections to registration in an adverse examination report.
Adverse examination reports on trade mark applications are usually based on the grounds of two groups of issues, namely,
If an Examination report is issued, the applicant will have a 15-month period during which to address any objections raised against its mark.
Options of to approaching examination reports include:
Section 41 and Section 44 objections are the most common objections raised against a mark. Section 41 provides the grounds for rejecting an application on the basis of the lack of distinguishing ability of the applicant’s trade mark in relation to the goods or services stated in the application, whereas Section 44 elaborates rejection grounds in the case of similar/identical trade marks. Both objections may be overcome by providing evidence of use.
This section of the Trade Marks Act provides the grounds of rejection of a trade marks on the basis that the mark cannot be used to distinguish the claimed goods and services from those of other traders in the market. Some considerations for this objection to be raised include that the mark may be:
On this basis, the application may be rejected under the following grounds:
The trade mark will only proceed to acceptance if the applicant manages to produce evidence that satisfies the examiner that the mark has been used to such extent that it has acquired a secondary meaning that now exceeds the primary meaning, and is therefore no longer descriptive for the claimed goods and/or services.
To overcome an objection on the basis of Section 41(3), the applicant needs to provide sufficient evidence to show that, at the date of filing, the mark had already been used to such an extent as to distinguish the claimed goods and services from those of others in the market. Evidence of intended use, such as marketing plans, is not acceptable evidence in this case.
To overcome an objection on the basis of Section 41(4), the applicant may rely on intended use to show that the mark will be capable of distinguishing when use in the marketplace commences, such use however needs to show a clear picture.
Evidence provided by the applicant may include:
If an objection has been raised in respect of the claimed goods/services, the applicant may:
Section 44 discusses grounds for rejection of an applicant’s mark on the basis that it conflicts with previously registered/applied for marks on the Register. Objections in these criteria may be addressed by:
To establish prior use, the applicant will need to provide evidence to show that the trade mark was used in Australia prior to the priority date of the cited mark(s). Evidence that may assist will include information as to how the trade mark was used, in relation to which goods and if such use was continuous.
Honest concurrent use evidence should include a evidence showing that the mark was used for a significant amount of time before the mark was applied for, and that during that time, the mark was used in Australia, continuously, for the specific goods and services claimed, concurrently with the cited mark and that no confusion had taken place.
Other special instances for overcoming an objection raised on the basis of a section 44 ground may include:
The issuance of an adverse examination report does not automatically mean that the trade mark application is rejected. Once the applicant files a response to an examination report the following may occur:
Once the trade mark is accepted, its details will be published in the Australian Official Journal of Trade Marks for a two-month opposition period. If no opposition is filed within this time, the mark will then proceed to registration.