What is a Trade Mark Examination Report?

Emily Young

• 24 January 2022
• 24 January 2022
• 6 min read

Before your trade mark application is approved for registration, it must pass several steps as part of the application process. This includes an assessment by Australia’s trade mark office, IP Australia. IP Australia will determine whether or not your trade mark meets all the requirements for registration. Where your trade mark does not meet IP Australia’s requirements, you will receive a trade mark examination report. This article will take you through what a trade mark examination report is and how you can overcome it.

Trade Mark Examination Reports

Where your trade mark application does not meet IP Australia’s legislative requirements, you will receive a trade mark examination report. Also referred to as an ‘adverse examination report’, this report will outline any reasons why your trade mark did not meet the legislative requirements for registration and provide you with options for overcoming these issues. This report will be uploaded to your online portal on IP Australia and is usually received three to four months after submitting your trade mark application (for a standard application) or two to four weeks after converting a Headstart request to a formal application.

If you receive a trade mark examination report, you will have 15 months to respond to the report and take any necessary action to overcome the issues raised by the examiner. This period includes both your response time and the time required to consider your response. This means it is a deadline to successfully resolve the issues raised and have the application accepted, rather than just a ‘response’ deadline.

Common Issues

When responding to a trade mark examination report, the potential options available to you will differ depending on the issues outlined in the report. For example, some of the most common issues raised by examiners in trade mark examination reports include where your:

• trade mark is similar or identical to an existing trade mark;
• trade mark is descriptive; 
• goods or services classes are classified incorrectly; or
• applicant details are incorrect.

For example, suppose your application is identical or substantially similar to another trade mark. In that case, you might need to demonstrate that you have been using your trade mark for longer than the earlier trade mark. If your application had incorrect details, you could typically amend your application by providing the correct details. Similarly, if your trade mark classes are incorrect, you might be able to simply amend your application to fix this (as long as the amendments do not expand the scope of your protection).

On the other hand, if your trade mark is considered too descriptive (and therefore lacks distinctiveness), you might have to provide evidence that your trade mark is recognised widely by the Australian public. However, demonstrating this can be difficult to do. 

Responding to a Trade Mark Examination Report

Again, depending on the reason for receiving an adverse examination report, the evidence you should provide will differ. For example, you might provide:

• marketing materials or packaging showing use of your trade mark;
• revenue figures reflecting the extent of your activities under the trade mark; and
• old websites or news articles to demonstrate long term use of your trade mark.

You should incorporate evidence of use of your trade mark in a declaration. This is then to be uploaded through IP Australia’s online services. One of the following should sign this declaration:

• an authorised employee of the company;
• an authorised third party, who knows about the matters contained in the declaration; or
• you, if you are the applicant.

Bear in mind that third parties may request access to your evidence under Freedom of Information provisions. Confidential business information is generally exempt from release, and so you should mark it in the declaration as confidential. 

Extensions of Time

If you are approaching the end of the 15 months to respond and need additional time, you can always apply for an extension.

You will need to apply for this extension before the end of the 15 months. Applying for an extension will entail fees. If you do not pay the necessary fees, the examiner will not consider your response.

In certain circumstances, you may also be able to ‘defer’ your application to essentially freeze the time remaining before the deadline without incurring further official fees.

Trade Mark Examination Outcomes

It is important to note that a trade mark examination report does not mean that IP Australia will reject your trade mark application. Several potential outcomes might arise from responding to a trade mark examination report. For example, your response might:

1. overcome the trade mark examination report, and IP Australia will accept your trade mark for registration; or 
2. address most of the issues in the trade mark examination report, and a new report is issued with some objections maintained. IP Australia will accept your trade mark for registration if you address these objections. Otherwise, your trade mark application might be rejected.

To avoid rejection, it is useful to have a professional assist with both your application and your response to a trade mark examination report.

Key Takeaways 

Where your trade mark does not meet IP Australia’s legislative requirements, you will receive a trade mark examination report. Some key things to note about trade mark examination reports include that they will:

• outline any reasons why your trade mark did not meet the legislative requirements for registration;
• provide you with options for how to overcome these issues; and
• have a 15-month time frame for you to respond.

If you need assistance registering a trade mark in Australia, our experienced trade mark lawyers can help. You can get in touch with them by calling 1300 657 423.

Frequently Asked Questions