Questions to Ask A Lawyer About Your Trade Mark Examination Report
George Raptis
Once you file a trade mark application with IP Australia, you may receive a trade mark examination report. You will likely receive a trade mark examination or adverse examination report if your trade mark application does not meet the requirements of the Trade Marks Act 1995. However, receiving this report does not necessarily mean IP Australia will reject your application. This article outlines several questions you should ask a lawyer upon receiving an adverse examination report.
What Are The Reasons For The Adverse Examination?
Suppose an examiner at IP Australia issues you with an adverse examination report. In that case, your application did not fully meet the legislative requirements for a registered trade mark. In saying that, the report will contain a written explanation of the grounds upon which IP Australia cannot accept your application.
Some reasons why you might receive an adverse examination report include:
- your trade mark is similar or identical to an existing trade mark;
- your trade mark merely describes your business’s goods and services;
- the wording of the goods or services within the classes you selected was incorrect, vague or too broad; or
- your ownership details needed to be corrected or properly worded.
Whatever the reason, you must clarify the reasons for the adverse examination with a lawyer. This way, you can respond to the report with appropriate evidence. For example, if you selected the wrong trade mark classes, you can amend this in your application as long as the amendments do not expand the scope of your protection.
When Should I Respond to a Trade Mark Examination Report?
If necessary, IP Australia will generally upload your adverse examination report to the online portal within:
- three to four months after you submitted your standard trade mark application; or
- two to four weeks after converting your Headstart application to a formal one.
You then have 15 months from the date you receive the adverse report to address any problems with your trade mark application.
Time Extensions
If you are approaching the end of the 15 months and require additional time, you should ask a lawyer about applying for an extension. You must apply for this extension before the end of the 15 months.
If you wish to apply for a time extension after 15 months, you will have to specify why you could not respond to the adverse report in time. For example, there:
- was an error or omission on your or your agent’s behalf; or
- were circumstances beyond your control that prevented you from responding to the report on time.
You should consider seeking legal advice before applying for a time extension.
What Should I Include In My Response?
The evidence you should provide in response to an adverse examination report will depend on the examiner’s reasons in your adverse examination report. For example, you might have to provide:
- marketing materials or packaging to show that you have used your trade mark for a certain period;
- financial reports to reflect the extent of your activities whilst using your trade mark; and
- websites or news articles that demonstrate how long you have used your trade mark or your reputation in the marketplace.
Additionally, your lawyer may advise you to incorporate evidence of use in a declaration. They can upload this declaration to IP Australia’s online services and ensure you pay the relevant fees.
What Will Be The Outcome?
Receiving an adverse examination report does not necessarily mean that IP Australia will reject your trade mark application. Instead, there could be different outcomes depending on your response to the report. Namely, your response might:
- overcome the issues the examiner identified in your adverse examination report; or
- address most of the issues in the adverse examination report, but the examiner issues a new report with some objections maintained.
You should seek legal advice to avoid having IP Australia reject your application. Having an experienced trade mark lawyer help you respond to an adverse report can ensure you have done everything in your power to eventually register your trade mark.
Key Takeaways
If you have received an adverse examination report, this does not necessarily mean IP Australia will reject your trade mark application. Instead, you can respond to the issues identified in the report. When responding to these issues, you should seek legal advice to address them appropriately.
If you need help responding to a trade mark examination report, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
An adverse examination report details why your trade mark application does not meet the requirements listed in the Trade Marks Act 1995.
Typically, IP Australia will issue applicants an adverse report between three to four months after the applicant has submitted their standard trade mark application or two to four weeks after they have converted their Headstart application to a formal one.