What Should I Do If My Trade Mark Application is Refused?

Emily Young

• 8 February 2022
• 2 August 2022
• 5 min read

If your trade mark application has been refused, you are probably concerned about the next step to take. You should consider a range of factors when deciding the best option for you, particularly why your application was refused. This article will take you through the common reasons for trade mark refusals and three potential pathways you might take if your trade mark is refused.

Reasons for Trade Mark Application Refusals

Before determining the best way to approach a trade mark application refusal, it is useful to consider the reasons for refusal. There are four main reasons why your trade mark application may have been refused. 

1. Generic or Descriptive

One of the main reasons trade mark applications are refused is because the trade mark is either too generic or descriptive. This refers to trade marks that only contain words or other common elements that others will need to use, making it unfair for one person to have exclusive rights to its use. 

For example, ‘Sydney Dry Cleaning Services’ may be considered too generic to be initially accepted by IP Australia.

In cases where you have been using your trade mark for a long time, such that the general public associates your trade mark with your brand, you might be able to overcome these issues. 

2. Prohibited By Law

Certain trade marks are prohibited by law, and will therefore not be available for registration. This includes various signs such as:

• flags;
• hallmarks;
• names of international intergovernmental organisations;
• emblems; and
• armorial bearings.

Such signs are protected under the Paris Convention for the Protection of Industrial Property, to which many other countries are also parties.

If your trade mark belongs to any category prohibited by law, it will not be available for registration. 

3. Similar to Existing Marks

Trade mark applications similar to existing trade marks are often subject to refusal. This is because similar trade marks are likely to confuse consumers in the marketplace if used for similar goods or services. For example, ‘DOVE’ is both a beauty brand and a chocolate brand, but the two marks can co-exist as it is unlikely anyone will confuse the two brands due to the differing trade mark classes they operate in.

There are several ways you can overcome conflicting trade marks. Depending on the circumstances, you can:

• show you have used your trade mark before the filing date of the conflicting trade mark application or registration; 
• amend your goods and services classes to avoid the conflict (noting that if you still use your trade mark for the conflicting goods or services, you may be infringing the rights of the other trade mark owner); or
• request consent from the owner of the conflicting trade mark to use your trade mark.

4. Forbidden Trade Marks

Another common reason trade mark applications are refused is that the trade mark in question is assessed as offensive, crude, or contrary to morality. This includes trade marks that contain restricted words or are discriminatory or defamatory to particular groups of people.

What Should I Do If My Trade Mark is Refused?

Once you have determined the reason for the refusal, you will be better positioned to assess your options for how to respond. There are several options to consider.

1. Appeal the Refusal

If you consider your trade mark has been refused unfairly, you might wish to consider appealing the decision. The Federal Court and the Federal Circuit Court have jurisdiction to hear trade mark rejections. You must institute an appeal to the Court within 21 days of the refusal.

It is important to note that taking matters to Court is usually a last resort due to the time and cost involved with such matters. Therefore, you should seek advice from a specialised trade mark lawyer before pursuing such action.

2. Rebrand Your Business

Suppose your trade mark application has been rejected, and you are unlikely to succeed in appealing the decision. In that case, you may need to consider rebranding your business to ensure a successful trade mark application. 

This will be particularly pertinent if it is refused on the grounds of being offensive or prohibited, as it will be impossible to overcome these for a successful application. 

3. Consider Ongoing Use 

If IP Australia has refused your trade mark, you may then decide to continue using your trade mark in the course of trade. While not prohibited, it is important to consider that your trade mark will be unprotected. For this reason, you will find it difficult to enforce your trade mark rights. 

Further, if your trade mark application has been refused because it is similar to an existing trade mark, you should ensure you do not partake in ongoing use. This is because you may be infringing on the registered trade mark.

Key Takeaways

If your trade mark application has been refused, you are likely concerned about the next best step to take. For example, some potential pathways you might take if your trade mark is refused include:

• appealing the refusal;
• rebranding your business and reapplying for registration; or
• considering ongoing trade mark use.

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

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