4 Tips to Succeed in the Trade Marks Examination Process

Emily Young

• 20 July 2021
• 31 August 2021
• 5 min read

Applying for a trade mark can be a long and complex process. After you have made a trade mark application, IP Australia will examine it to ensure that it meets all of the trade mark requirements. If your trade mark does not meet the requirements, you will receive an adverse examination report that outlines all the problems with your application, which you can then respond to. 

Receiving an adverse examination report can delay the registration of your trade mark by months. Therefore, succeeding in the trade marks examination process in the first instance can help make the trade mark registration process much fast and more seamless. This article will take you through four tips to succeed in the trade marks examination process.

1. Conduct a Trade Mark Search

Conducting a thorough trade mark search is an essential part of succeeding in the trade marks examination process. A trade mark search is what determines whether your proposed trade mark is free to use, therefore determining the success of your trade mark application. Therefore, conducting a trade mark search as thoroughly as possible will help avoid any adverse findings, helping you succeed in the trade marks examination process. 

Remember that you are not only looking out for trade marks that are identical to yours, but you should also avoid trade marks that might be considered too similar.

For trade mark applications in Australia, you can search IP Australia’s Australian Trade Marks Online Search System (ATMOSS).

2. Follow Deadlines

Following deadlines is a critical element of succeeding in the trade marks registration process. The entire trade mark process is very procedural, and there are strict deadlines. Failure to meet these deadlines may result in IP Australia considering your application abandoned, and you will have to start the application process all over again.

If you are concerned you will not meet a looming deadline, there is always a possibility to receive an extension of time by filling out the relevant form and paying the applicable fee. This is always the preferred option instead of missing a deadline and having your application lapse. 

3. Avoid Mistakes

Avoiding simple errors is a simple but foolproof tip to help you succeed in the trade marks examination process. Simple errors that are both easy to overlook and seem trivial may lead to the rejection of your trade mark or a delay in the trade marks examination process. Some common errors to avoid include filing under the incorrect name, selecting the inappropriate classes of goods or services for your trade mark or providing poor evidence for your trade mark.

After submitting your trade mark application, it can take up to four months before you hear anything back from IP Australia. This is a substantial amount of time to waste if your application comes back with adverse findings. Avoiding simple technical errors is one way to succeed in the trade marks examination process.

4. Provide Sufficient Evidence 

When applying for your trade mark, you will be required to provide a ‘representation of the trade mark’, or evidence of what the trade mark looks like. This includes a graphic representation of the trade mark, or in the instance of a non-traditional trade mark such as a colour, scent, or aspect of packaging, a detailed description of the trade mark. There are strict requirements when providing a representation of the trade mark, and following these guidelines is the key to succeeding in the trade marks examination process. 

For example, your trade mark representation must:

• be smaller than 8 cm x 8 cm;
• show every feature of the trade mark; and
• include a translation of any foreign words.

Failure to meet these requirements may result in sufficient delay in the examinations process or even a rejection of your application.

Key Takeaways

Succeeding in the trade marks examination process is the pinnacle of having your trade mark application successfully registered. Therefore, some tips to consider to help you succeed in the trade marks examination process include:

• conducting a thorough trade mark search;
• following deadlines;
• avoiding mistakes in your trade mark application; and
• providing sufficient evidence in your trade mark application.

If you need help succeeding in the trade marks examination process, our experienced trade mark lawyers can help. You can contact them on 1300 657 423 or by filling out the form on this page.

Frequently Asked Questions