What types of objections can IP Australia raise?

When you apply to register a trade mark in Australia, your application will be examined by IP Australia. The examiner checks your application against several grounds under the Trade Marks Act 1995 to determine whether the mark is eligible for registration.

If the examiner identifies any issues, they will issue an examination report setting out the objections. Understanding the different types of objections can help you anticipate potential issues before you apply and respond effectively if you receive one.

Section 41 objections - your mark is not distinctive enough

The most common type of objection is under section 41 of the Trade Marks Act 1995. This section requires your trade mark to be capable of distinguishing your goods or services from those of other traders.

In simple terms, if your mark is too descriptive or too generic, the examiner will raise an objection.

What does "descriptive" mean?

A descriptive mark is one that directly describes the goods or services, their characteristics, quality, intended purpose, or some other feature. It tells the consumer what the product or service is, rather than who provides it.

For example, if you tried to register "FRESH BREAD" for a bakery, or "FAST DELIVERY" for a courier service, the examiner would almost certainly raise an objection. Those words simply describe what the business does - they don't tell a consumer which bakery or courier service they are dealing with.

Other traders should also be free to use descriptive words to describe their own goods and services. Allowing one trader to monopolise a common descriptive term would be unfair to everyone else in the market.

The spectrum of distinctiveness

Not all marks are equally distinctive. Trade marks generally sit on a spectrum:

• Generic terms (e.g. "BREAD" for bread) - cannot be registered. These are the common name for the goods or services themselves.
• Descriptive marks (e.g. "FRESH BREAD" for a bakery) - very difficult to register. They directly describe a characteristic of the goods or services.
• Suggestive marks (e.g. "GOLDEN CRUST" for a bakery) - these hint at the goods or services without directly describing them. They are generally easier to register.
• Arbitrary marks (e.g. "AMAZON" for an online retailer) - existing words used in a context unrelated to their ordinary meaning. These are typically strong marks.
• Invented or coined marks (e.g. "GOOGLE") - entirely made-up words with no prior meaning. These are the strongest type of mark.

The further your mark sits towards the "invented" end of the spectrum, the less likely it is that you will face a section 41 objection. For more guidance on choosing a mark that avoids these issues, read our guide on how to choose a good trademark.

Section 44 objections - a conflicting mark already exists

The other very common objection is under section 44. This section prevents the registration of a trade mark that is substantially identical or deceptively similar to an existing mark on the register, where the goods or services overlap or are closely related.

In other words, if someone has already registered a similar mark for similar goods or services, the examiner will raise an objection.

How examiners assess similarity

The examiner will compare your mark against existing registrations and pending applications across three key dimensions:

• Visual similarity - do the marks look alike? This includes the overall appearance, spelling, and any design elements.
• Aural similarity - do the marks sound alike when spoken? Marks that are spelt differently but sound the same (e.g. "KOOL" and "COOL") can still be considered similar.
• Conceptual similarity - do the marks convey a similar idea or meaning? Even if two marks look and sound different, they may be objected to if they share the same underlying concept (e.g. a sun logo and the word "SUNRISE").

The examiner considers the overall impression the marks would leave on a consumer, rather than examining them side by side in fine detail.

Goods and services overlap

It is not enough for two marks to be similar - the goods or services must also overlap or be closely related. For example, two identical marks could coexist on the register if one is for clothing and the other is for accounting services, because there is no connection between the goods and services.

However, goods and services don't need to be identical for an objection to be raised. Closely related goods and services - such as clothing and footwear, or cafes and catering - may be considered close enough to cause an issue.

This is one of the reasons why it is a good idea to search the trade mark register before you file your application.

Other grounds for objection

While sections 41 and 44 cover the vast majority of objections, the Trade Marks Act 1995 includes several other grounds that can arise in certain circumstances.

Scandalous or contrary to law

A trade mark may be refused if it contains or consists of scandalous matter, or if its use would be contrary to law. This can include marks that are offensive, or marks that would mislead or deceive consumers.

Protected signs and emblems

Certain signs are protected under Australian law and cannot be registered as trade marks (or as part of a trade mark) without authorisation. These include:

• Australian and foreign government emblems, flags, and insignia;
• the emblems of international organisations (such as the Red Cross); and
• certain official signs and hallmarks.

Bad faith applications

If IP Australia considers that an application has been made in bad faith - for example, where the applicant has no genuine intention to use the mark and is attempting to trade on the reputation of another business - the application may be refused.

What to do if you receive an objection

Receiving an objection is not the end of the road. Many objections can be overcome with the right approach, whether that involves filing evidence, amending your application, or making legal arguments.

It is important to respond within the deadline set by IP Australia. If you don't respond, your application will lapse.

For a detailed overview of the examination process, read our guide on what to expect from a trade mark examination report. If you've already received an objection and want practical advice on your next steps, check out our article on how to overcome a trade mark examination report.

If you've received a section 41 objection specifically, our article on what to do if your trade mark was rejected as descriptive may also be helpful.

Frequently asked questions

What is the most common objection raised by IP Australia?

Section 41 (distinctiveness) and section 44 (conflicting marks) objections are by far the most common. Of these two, distinctiveness objections tend to arise most frequently, particularly where business owners have chosen marks that describe their goods or services.

Can I still register my trade mark if an objection is raised?

Yes, in many cases. An objection is not a rejection - it is an invitation to respond. Depending on the nature of the objection, you may be able to overcome it by filing evidence of use, amending your application, or making legal submissions. A trade mark lawyer can help you assess your options.

How can I avoid objections in the first place?

The best way to reduce the risk of objections is to choose a distinctive trade mark and complete a thorough search of the trade mark register before you apply. This helps you avoid both distinctiveness issues and conflicts with existing marks.

Need help?

If you've received an examination report and need help responding, upload your report for a free review or contact us for advice before you file your application.

Please note, 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.