So you’ve submitted your trade mark application, what comes next? Before you can be approved for registration your application needs to pass through several steps. One of these is an assessment by IP Australia, Australia’s trade mark office.
Designed to examine every aspect of your application and determine where it can be approved, this assessment can be daunting for applicants. Known as a trade mark examination, those applications that do not meet the necessary criteria will be given a trade mark examination report.
In this guide, we will review what this report means concerning your application and how you can overcome any issues it has flagged.
Trademark examination reports
Also known as an ‘adverse examination report’ these reports outline any issues the examiner has with a trade mark application. Every application must meet strict legislative requirements in order to be approved.
These reports are accessible via your portal on IP Australia and are most often uploaded within three to four months of your initial application for a trade mark.
Should you have skipped the standard applications process and converted a Headstart request into an application you could receive your report in as little as two to four weeks.
Should you receive a trade mark examination report instead of the anticipated approval, you will have a period of 15 months in which to resolve these concerns and respond to the report.
The most important thing to remember is that receiving an examination report does not mean your application is rejected. It is simply highlighting some issues with your application and giving you time to fix them, following which you may be approved without further issues.
Common reasons trade mark examination reports are issued
Is it possible to avoid a trade mark examination report? Yes, it is. If you follow the guidelines for the application and thoroughly check before submission, you may never be issued an examination report, and will gain trade mark approval.
Some of the most common mistakes applicants make include:
- Conflict with section 44 of the Trademarks Act wherein the trade mark applied for is already in existence or too similar to one that is already registered.
- The trade mark is descriptive and not distinctive enough
- The nominated goods and services classes are incorrect or
- The applicant’s details are incorrect
So what do you do if you receive an examination report?
How to respond to an examination report
As indicated above, you will have 15 months from the date the report is issued to both respond and resolve the concerns. Depending on what the issues raised are, it could be a simple matter of updating your trade mark classes or applicant information.
For more complex issues such as those contravening section 44 of the trade marks act, you may need to revisit your trade mark design and alter it to be substantially different from an existing trade mark.
If you have been using this trade mark for a long period and can prove you were using it before the conflicting trade mark was registered, you may be able to overcome this. However, it can be difficult to prove this.
Likewise, for trade marks that are too generic and not unique enough you may be required to either change your trade mark or prove it is already recognisable to the public as your business trade mark.
Types of evidence
If you plan to challenge the problems outlined in the report, you will need to provide evidence to support your actions. While the type of evidence you will need to give will depend on your circumstances, things that are accepted for consideration include:
- Old websites, past news articles and old social media posts that show long-term use of the trade mark
- Any marketing materials or packaging in use by your business
- Accounting information, particularly revenue figures that demonstrate your activity and earnings while using the trade mark
All proof or evidence is then included in a formal declaration which is uploaded into the same IP Portal where the examination report was issued.
Please note that before you submit the declaration, it must be signed by an authorised representative such as an employee of your business, a qualified third party involved in the declaration (such as a trade mark attorney) or yourself as the applicant.
Running out of time?
While 15 months should be ample time for you to source evidence and complete a declaration, if you need additional time you can apply for it. Additional time requires payment of an extension fee and should you not pay this fee your application will be rejected on grounds of missing the provided deadline.
The only caveat to this is if you opt to defer your application. This is not always an available option to every applicant, however, in some situations you can essentially press pause on the application and stop the clock on the response time. This means no additional fees need to be paid and your application is simply held in suspense for a period of time. Once this time lapses you will then need to still address the objections raised.
What to expect following resolution and resubmission
If you’ve taken steps to resolve the concerns in the examination report, there are a few potential outcomes you can expect.
- Approval
If the examiner accepts your response and/or amendments, IP Australia will accept your application and your trade mark will be registered.
- An additional examination report is issued
While not ideal, if your response is deemed to have only resolved some of the concerns outlined or the proof was not accepted it doesn’t mean rejection of your application.
A new report will be issued with relevant objections maintained and a new response is required. Thus giving you another opportunity to correct any issues and have your application approved.
Should I seek professional help?
If you have managed your trade mark application without issues but receive an examination report and have no idea what to do next, then professional help can be incredibly valuable.
Of course, seeking professional help from a trade mark attorney from the outset is the more efficient approach as they can ensure the decreased possibility of receiving an examination report.
This is not to say you cannot manage this process yourself, however, it can be significantly less time-consuming and less stressful to have a professional manage your trade mark application from the outset. They can then also handle any concerns that arise during the process.
Where to find help
At IP Guardian, we have decades of experience managing even the most complex trade mark applications and examination reports. No matter where you are in your journey to register a trade mark, we can help. We don’t mind stepping in to resolve issues outlined in examination reports, even if we were not involved in the application.
As a qualified team of trade mark and patent attorneys, our goal is to support Australian businesses and thrive through the proper protection of their intellectual property.
We offer cost-effective consultations designed to be accessible to businesses of all sizes. We make short work of applications and minimise the chances of examination reports being issued.
With proper checks performed for similar existing trade marks, accurate assignment of goods and services and in-depth reviews of all paperwork before submission, your trade mark application can be approved in record time.
For genuine, professional support from qualified trade mark attorneys, contact the team at IP Guardian today at (02) 9071 0130.
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