Australia: Who can oppose my trademark application?
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If you want to protect your company’s intellectual property and brand, you’ve probably considered filing a trademark application. A trademark application is the only way to register a trademark in Australia. A registered trademark gives you the exclusive right to use the mark for the goods and services claimed.
If IP Australia thinks there are issues with your mark, or if a third party objects to your application, you may need to prepare a response to try to overcome those objections. In the following article, we’ll look at who can object to your application, common reasons for objection, and what you can do to overcome them.
Who can object?
IP Australia reviews every trademark application filed in Australia. A reviewer will be assigned to your application and determine if there are any reasons why your application should not be accepted. If your application is objected to at this stage in the form of an adverse examination report, you have 15 months from the date of the report to overcome the objections raised.
The other type of objection you may encounter is an objection. Once IP Australia accepts a mark, it will advertise it for two months prior to registration. During these two months, anyone can object to your candidacy. They will have to justify why they opposed your application. However, if they can establish a ground for opposition, your mark will not be registered and will lapse. This article does not discuss objections, and we suggest that you seek legal assistance if you receive an objection to your application.
Common grounds for objection
An examiner may raise a number of grounds in response to your trademark application. The most common are:
Prohibited and prescribed signs
An examiner may object to your application if it includes a prohibited sign in a mark.
The mark cannot be represented graphically
If the examiner considers your mark incapable of graphic representation, he may oppose it. For example, if you try to register a logo that you cannot represent as an image, it may receive an objection.
The Examiner may object to your application if they deem it too descriptive of the goods and services claimed. There are two potential levels to this specific objection depending on your brand.
- The first is that the brand has limited adaptation to distinguish. This means that your mark is not distinctive enough to be registered as a mark and is not sufficient for the mark to be accepted without proof of use or other circumstances.
- The second is that the brand has no inherent adaptation to distinguish. This is the stricter of the two thresholds. This means that the intended mark is currently in common use and serves directly to describe the goods or services. For example, if you sell apples and attempt to register the word “apples” as a trademark, it will likely fall below this threshold. This is because your brand in no way distinguishes your business from other apple sellers.
Suppose the examiner considers your mark to have no inherent adaptation to distinguish. In this case, you will have to prove that you have already been using the mark for a important time before the examiner accepts your application.
Scandalous or contrary to law
If your mark is scandalous or offensive in any way, the examiner may oppose your application. Additionally, if your trademark registration would conflict with another Australian law, the examiner will oppose it.
Likely to mislead or confuse
If your mark is likely to mislead or cause confusion, the examiner may object to it. A good example of this is when a mark refers to a particular geographic location. If you cannot confirm that the goods and services come from this location, it is likely to mislead or confuse consumers.
If the Examiner considers your proposed trademark to be too similar to a pre-existing trademark registration, or even to a pending application, they may oppose your application. Your mark does not need to be identical to a pre-existing mark for this ground. The examiner will consider whether the mark looks the same, sounds the same or has any common elements that consumers would confuse with the pre-existing mark.
Key points to remember
If you receive any of the objections listed above, or a combination of them, then you will need to prepare a response to the review report. Strategies for overcoming the objection may vary depending on the objection, such as:
- proof of use;
- submit arguments against the examiner’s decision;
- seek the consent of the owner of a pre-existing mark; Where
- delete a mark that you have not used for a required period of time.
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