Mark My Words: Overcoming Objections to your Trademark

Standing out in today’s marketplace takes more than just good marketing. It requires a distinctive and trusted brand that customers can easily recognise. Overcoming trademark objections is often a necessary step for businesses seeking to protect their brand through trademark registration in Australia. Trademarks play a key role in preserving a business’s identity, reputation and value, but the registration process is subject to statutory requirements enforced by IP Australia.

Applicants frequently receive objections or adverse examination reports due to issues such as similarity with existing trademarks. While these provisions aim to prevent confusion in the market, there are mechanisms for overcoming trademark objections through continuous prior use, honest concurrent use, or other circumstances recognised under the legislation. This article outlines how trademarks operate under Australian law and what steps can be taken when objections arise during registration.

What is a trademark?

The purpose of a trademark is to primarily protect a business’s unique brand, product or service. A trademark associated with a business often influences their level of recognition, customer loyalty and subsequently their general reputation in their industry.  A Trademark also affords legal rights and protection to grant the owner exclusive rights to use the mark for their goods and obstruct other businesses to using similar marks. Oppitunities for business growth under the trademark use also enables potential investors to be attracted to a strong trademark and becoming a trusted mark makes it easier to introduce new products under the same umbrella.

According to IP Australia, a trademark can be used to protect the following:

• Logo
• Phrase
• Word
• Letter
• Colour
• Sound
• Smell
• Picture
• Movement
• Aspect of packages
• Any combination of the above.

What cannot be a trademark?

There are certain circumstances where a proposed trademark cannot be registered.

Most commonly a trademark cannot be:

• Used illegally (i.e Contrary to law – misleading or deceptive under consumer law, precluded by legislation e.g Olympic Rings, the word ‘ANZAC,’ the Australian Flag etc.)
• Controversial or Scandalous (i.e coarse, offensive language idiosyncratic spelling)
• Deceptively similar to an existing trademark
• Include commonly descriptive works (i.e Abbreviations, acronyms, exact pictures of common goods, phrases, common surnames)
• Words condoning violence or hate (i.e sociopathic undertones, racism, offensive slurs etc.)

Grounds for Rejecting a Trademark Application

Section 44 of the Trademarks Act 1995 (Cth) deals with applications that may be rejected on the grounds that:

• The applicant’s trademark is substantially identical with, or deceptively similar to either a trademark registered in respect of similar goods or closely related services
• The priority fate for the registration of the applicant’s trademark is respect to their goods is not earlier than the property date for registration of the other trademark in respect of the similar goods or closely related services.

“Deceptively Similar” Section 10 of the Act defines this as if the trademark nearly resembles another and is likely to deceive or cause confusion”

“Priority Date” Section 12 defines this date as being the date of registration

Grounds for overcoming an Objection

Under section 44(3), in the case that the registrar is satisfied that:

• That there has been honest concurrent use of the trademarks; or
• That, because of other circumstances, it is proper to do so;

An application may be accepted for registration with conditions or limitations imposed by the registrar as they see fit. For example, the registration may be restricted to a particular area.

Under section 44(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the earlier in title of the applicant, have continuously used the applicant’s trade mark for a period:

• beginning before the priority date for the registration of the other trade mark in respect of:
  1. the similar goods or closely related services; or
  2. the similar services or closely related goods; and
• ending on the priority date for the registration of the applicant’s trade mark;

However, the Registrar may not reject the application because of the existence of the other trademark.

Submitting against an objection or adverse examination report.

In the case you are notified by IP Australia with an ‘Adverse Examination Report” which serves to notify the applicant has not met the requirements of the Act, you may respond by way of declaration. Under Regulation 21.6 of Trade Mark Regulations 1995 (Cth) the declaration under the approved form (accessible via IP Australia Website) allows the applicant to provide submissions and supporting evidence towards their claim. The adverse report will outline the way in which the form should be completed but generally submissions should be paragraph with evidence annex supporting each point.

Types of ‘Evidence of Use’

Providing ‘evidence of use’ is relevant in the case your examination report requires you to respond to issues under section 44 of the act, that the mark is too similar to an existing one.

This evidence should demonstrate:

• Prior Use

The earlier, now conflicting trademark will have a ‘priority date’ usually on the date that it was filed. Therefore, the declaration needs to show that you have used the trademark before that priority date, and this has been continuous at least up to the date you field your application. For example, you may state the date since which you began selling goods or documentation of continuous sales during the relevant period.

• Honest and concurrent use

Demonstrating that the use of your trademark is honest you should include a brief history of when the trademark was chosen, why and how it was chosen and whether you performed any searches before attempting to register.

• Other Circumstances 

These may include using the trademark with the consent of the owner of the conflicting one with an earlier priority date or that they agree that your trademark should be registered in writing.

Examples of Documented Evidence

The declaration form allows for annexures of documented evidence to be annexed to your submissions. Depending on the circumstance of why your application was rejected, gathering evidence is important to support your claim.

The following types may be annexed:

• Snapshots from a web archiving service (i.e Wayback Machine) of the business website to show historical use
• Information relating to sales under the trademark
• Social media, advertising and promotional material that includes the trademark
• Testimonials
• Indications of customer base
• Publications and articles mentioning the trademark
• Customer surveys or questionaries

Confidentiality Notice: It is important to note, according to the form that by submitting the declaration form the following can happen:

• Other people can pay a fee for a copy of your declaration (section 217A of the Trade Marks Act 1995)
• If your declaration relates to an opposition proceeding, this will be made available to parties involved in the opposition.
• Other people can request access to your declaration under the Freedom of Information Act 1982 (the FOI Act).
• Under the Trade Marks Act, you can request that your declaration be treated as confidential.  However some personal information including your name, address, your title and other work-related details in your declaration will not be held in confidence.
• If someone requests access under the FOI Act to confidential details in your declaration, you will be given an opportunity to prove that it is confidential.

Conclusion

Trademark legislation plays a critical role in standardising and maintaining the integrity of Australia’s trademark system. In preventing confusion and protecting intellectual property, brand identity is safeguarded and consumers can distinguish between different sellers. With proper legal advice and supporting evidence, applicants may overcome objections, achieve registration, or better understand the trademark application process.

Jake McKinley notes that this article is written for the purpose of providing generalised information and not to provide specialised legal advice. If you require qualified legal advice on anything mentioned in this article, our experienced team of solicitors at Jake McKinley are here to help. Please get in touch with us on 02 9232 8033 today to make an enquiry. 

Written by Brooke Nguyen, Law Graduate