When Dr. Elizabeth Kirk, Beyond Ergo decided to rebrand her specialised ergonomic business, she consulted with Binh Rey for assistance with trademarking her new name. What she discovered was that her chosen name wasn’t an ideal representation of her business, and rebranding was more involved than simply choosing a new name.
Examination of a trade mark application
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:
- Are the goods and/or services claimed in the application clear and in the correct classes?;
- Is the mark too similar to previously registered/applied for marks?
- Is the mark otherwise allowable for registration or are there other prescribed reasons to prevent it from being registered?.
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 report
Adverse examination reports on trade mark applications are usually based on the grounds of two groups of issues, namely,
- whether the mark itself is allowable in light of Sections 39 to 43, and
- whether the mark and goods and services are sufficiently different to other earlier marks in light of Section 44 of the Trade Marks Act.
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:
- Providing submissions arguing why the objections should not have been raised or maintained including through legal arguments;
- Amending the application in order to overcome the objection(s) or;
- Providing evidence of use
Evidence of use
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.
Providing evidence under Section 41
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:
- purely descriptive of the goods and services;
- a common surname or geographical location; or
- include commonly used elements in trade.
On this basis, the application may be rejected under the following grounds:
- Section 41(3) – the mark has no inherent adaptation to distinguish
- Section 41(4) – the mark has limited adaptation to distinguish
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.
Types of Section 41 evidence
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:
- Long period of use
- Large turnover or sales figures
- Continued use of the trade mark even after the filing date (only for 41(4)).
- Consumer surveys
- Publications and advertising
- Indications of market share
If an objection has been raised in respect of the claimed goods/services, the applicant may:
- Amend the list of specifications of goods and/or services dependant on the objection
- Provide arguments to support the validity of the specification as claimed, including by using material that was otherwise unavailable to the examiner at the time of examination.
Providing evidence under Section 44
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:
- Providing evidence of prior use;
- providing evidence of honest concurrent use;
- other circumstances.
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
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:
- That the Applicant is using the mark with authorisation of the owner of the cited mark (as in the case of subsidiary companies)
- That the applicant has requested and obtained a letter of consent from the owner of the cited mark
Trade mark examination outcomes
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:
- The Examiner will assess if the provided evidence/arguments are sufficient to overcome the objections, if all or some objections are maintained, an additional report may be issued. If the applicant fails to overcome the objections raised on the report(s) within 15 months of the first report being issued (and if no extensions are requested), the application will be refused; or
- The provided evidence/arguments is considered sufficient to overcome the objections against the mark and the mark will be accepted for registration.
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.