After your trade mark registration application is lodged, IP Australia, the government agency responsible for assessing and registering trade marks, will examine the application and consider if it is suitable for registration. Your trade mark needs to fulfil a number of requirements as set out by the Trade Marks Act 1995. IP Australia will examine your trade mark application with respect to the Trade Marks Act 1995.
If IP Australia concludes that your trade mark application is not suitable for registration, it will refuse to accept the application and issue an adverse report listing down their reasonings behind their refusal. Some of the more common reasons for refusal are:
- The trade mark does distinguish the good or service.
- The trade mark contains words or phrases that other traders are likely to use.
- The trade mark is identical or substantially similar to another trade mark.
An adverse report does not end the application. If you have been issued with an adverse report, IP Australia will give you 15 months from the time the report was issued for you to address their concerns. During this time you should put together affidavit and documentary evidence showing that the trade mark is suitable. Some of the evidence commonly put fowards are:
- The current use of the trade mark.
- How long the trade mark has been in use.
- How the trade mark is different from other people’s trade marks.
Once evidence has been submitted, IP Australia will reconsider your application. If, despite the additional evidence, they do not change their mind, you can elect to have the matter heard before a registrar. Should that hearing fail, the only avenue open to you is to appeal the registrar’s decision before the Federal Court.
If you are successful, the application is accepted and it will be advertised in due course. Please refer to The Trade Mark Registration Process (Simple and Unopposed) to see what happens after this.
Responding to an adverse report can be difficult. We can assist you in this process by assisting you with the preparation of evidence and submissions for IP Australia, or if necessary preparing the matter to be heard before a registrar.
A simplified flowchart of this process appears below:
Download this flowchart: Trade Mark Process – Responding to an Averse Report