What to do when IP Australia says “NO” to you
After you lodge your trade mark application with IP Australia, IP Australia will examine your trade mark application to determine whether it satisfies the requirements of the Trade Marks Act 1995. If your trade mark application does not meet the requirements of the Trade Marks Act 1995, IP Australia will issue you with an adverse examination report. You may receive an adverse examination report for various reasons. For example, you may have entered incorrect applicant details or there may be an error in your description of classes. Commonly, many trade marks do not pass the examination stage simply because it was found to be insufficiently distinguishable from other trade marks.
If you have received an adverse examination report from IP Australia, the first thing is – do not panic!
You have 15 months from the date of the examination report to respond to IP Australia. In your response, you must provide satisfactory and sufficient grounds as to why your application meets the requirements of the Trade Marks Act 1995 and should pass the examination stage.
What to do when you receive an Adverse Examination Report?
Read the Adverse Examination Report
An important thing to remember is that your application is examined by one of IP Australia’s trade marks examiners and the report is therefore subjective and discretionary. You may not agree with the contents of the adverse examination report but it generally gives a pretty good indication of why your trade mark did not pass the examination stage and what steps you need to take in response.
Use your trade mark
An adverse examination report does not signal the end of the road for your trade mark application, it simply means that there is an additional hurdle to jump over. Patience and persistence is key when it comes to trade mark registration. Unless your trade mark infringes on a registered trade mark, you can and should continue to trade using that trade mark. You should also be collecting evidence about your use of the trade mark so when the time comes to respond to IP Australia, you can present evidence that goodwill has been generated in this trade mark.
Speak to a lawyer who can help you. Your lawyer will be able to explain the contents of the adverse examination report, suggest some strategies about what to do next and assist you with responding to IP Australia in due course.
If you have received an adverse examination report from IP Australia and need assistance with what to do next, please get in contact with us, our team of lawyers will be more than happy to hear from you.
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For more information on our trade mark services and quotes on our professional fees, please contact us or visit our quoting page. Our experienced trade mark lawyers will contact you to explore how we can improve your business and add to your balance sheet by realising the value in your intellectual property through trade mark registration.
Trade Mark Lawyer
Carina Yap is a solicitor with Phang Legal, an incorporated legal practice based in Parramatta CBD providing professional legal services in trade mark advice, representation and trade mark registration to businesses across Sydney and Australia.