How to overcome a trade mark examination report

So you've filed your trade mark application and received an examination report from IP Australia. Don't panic. Receiving a report doesn't mean your application is dead in the water.

The good news is that many examination reports can be overcome with the right response. There are often options available that aren't immediately obvious from the report itself, and many applicants aren't aware of just how many tools are at their disposal.

If you haven't already, it's worth understanding what a trade mark examination report is and the types of objections IP Australia can raise before diving into how to respond.

This article covers the main strategies you can use to overcome an examination report and get your trade mark registered.

Legal submissions

A common way to respond to an examination report is by making legal submissions. This means presenting written arguments to the examiner explaining why their objection should be withdrawn.

For example, if the examiner has raised an objection on the basis that your mark is not distinctive enough to be registered, you might argue that the mark does in fact possess the requisite level of distinctiveness when considered as a whole and in the context of the goods or services you've applied for.

If the objection relates to a conflicting mark under section 44 of the Trade Marks Act (a citation), you might argue that the marks are not deceptively similar. This could involve comparing the visual, aural and conceptual aspects of the marks, and explaining why consumers are unlikely to be confused.

Legal submissions require a solid understanding of trade mark law and how examiners apply the relevant tests. A well-crafted submission can make the difference between acceptance and refusal.

If your mark has been rejected as descriptive, there are specific arguments that may be relevant to your situation.

Evidence of use

If your trade mark has been in use in Australia before the filing date, you may be able to overcome certain objections by filing evidence of use.

This is most commonly used to overcome section 41 objections, where the evidence needs to demonstrate that the mark has become distinctive through use, meaning that consumers have come to associate it with your goods or services. However, evidence of use can also be relevant to section 44 objections, for example by showing use of your mark prior to the priority date of a cited mark, or by establishing honest concurrent use.

Filing evidence of use typically involves preparing a statutory declaration (a sworn statement) supported by documents showing genuine and continuous use of the mark in the course of trade.

The kind of evidence that can support this includes sales figures, advertising spend, examples of marketing materials, invoices, website traffic data and customer testimonials.

Preparing evidence of use can be a detailed process, and the evidence needs to meet certain requirements. We've covered this in more detail in our guide on what evidence of use involves for a trade mark.

Letters of consent

If your application has been blocked because of a similar mark owned by someone else (a section 44 citation), one option is to approach the owner of the blocking mark and ask them for a letter of consent.

A letter of consent is a written statement from the owner of the cited mark confirming that they have no objection to your mark being registered.

In practice, IP Australia will generally accept a letter of consent and withdraw the citation.

That said, it's often worth exploring this option. The owner of the cited mark may not even be aware of your application, and many owners are willing to provide consent if your goods and services don't directly compete with theirs.

Amending the application

Sometimes the simplest way to overcome an objection is to amend your application. This might involve:

Narrowing the goods and services specification. If the objection is based on a conflict with another mark, limiting your specification to exclude overlapping goods or services can sometimes resolve the issue. For example, if you've applied broadly for clothing but the conflict only arises in relation to footwear, removing footwear from your specification may be enough.
Disclaiming part of the mark. If the objection relates to a descriptive or non-distinctive element within your mark, you may be able to disclaim that element. A disclaimer means you acknowledge that you don't have exclusive rights over that particular element on its own, but the mark as a whole is still protectable.
Making other amendments. Depending on the nature of the objection, other amendments to the application may be possible, such as correcting owner details or clarifying the representation of the mark.

The key is to make sure any amendment resolves the objection without significantly weakening the protection your registration will provide. Getting the goods and services right from the outset can help avoid this situation, so if you're still in the planning stages, check out our guide on how to choose the right goods and services for your trademark application.

Combining approaches

In practice, the strongest response to an examination report often combines multiple strategies.

For example, you might file legal submissions arguing that the marks are not deceptively similar, while also narrowing your goods and services specification to reduce the overlap with the cited mark. Or you might combine legal submissions on distinctiveness with evidence of use to build the strongest possible case.

The right combination depends on the specific objections raised, the strength of your arguments and the evidence available to you. Taking the time to consider all of your options before responding will put you in the best position.

Deadlines and timing

IP Australia sets a deadline for responding to an examination report, and it's important not to leave your response to the last minute.

You'll typically have 15 months from the date of the first examination report to get your application accepted. However, there are a couple of things to keep in mind:

IP Australia requires at least 4 weeks to review a response. If you file your response right before the deadline, the examiner may not have time to review it before the deadline expires.
You may need more than one round of correspondence. The examiner might not accept your first response, and you may need to file additional submissions or evidence. Each round takes time, so the earlier you start, the more room you have to work with.
Extensions are possible, but not guaranteed. In some circumstances, you can request an extension of time, but this involves additional fees and isn't always granted.

The best approach is to respond as early as possible. This gives you the flexibility to adjust your strategy if your initial response doesn't fully resolve the objection.

When to get professional help

You can respond to an examination report yourself, and many applicants do. However, some objections are more complex than others, and a response that misses the mark (no pun intended) can make it harder to get your application accepted down the track.

If you're dealing with a section 44 citation against a well-known mark, a distinctiveness objection for a mark you've been using for years, or multiple objections in the same report, it's worth getting professional advice.

What might seem like a fatal objection often has a viable path forward with the right analysis and strategy. A trade mark lawyer can assess the objections, identify the strongest arguments available, and prepare a response that gives your application the best chance of success.

If you need help responding to an examination report, upload your report for a free review or contact us today.

Frequently asked questions

Can I respond to an examination report myself?

Yes, you can respond to an examination report yourself. IP Australia's online portal allows you to file a response directly. However, if the objections are complex or you're unsure about the best approach, getting professional help can improve your chances of success.

What happens if my response to the examination report is rejected?

If the examiner doesn't accept your response, they will issue a further report explaining why. You can then file additional submissions, evidence or amendments to try to overcome the remaining objections, provided you are still within the deadline. If all options are exhausted and the examiner maintains the objection, your application may be refused, at which point you can request a hearing or appeal the decision.

How long does it take for IP Australia to review a response?

IP Australia generally requires at least 4 weeks to review a response to an examination report. During busy periods, it can take longer. This is one of the reasons it's important to respond early rather than waiting until the deadline.

The information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.