Common Objections Raised by Trade Mark Examiners

When you apply for a trade mark in Australia, your application goes through a formal examination process by IP Australia. This isn’t just a box-ticking exercise. The examiner reviews your application against several legal requirements under the Trade Marks Act 1995. If your application doesn’t meet the mark, you’ll receive an adverse examination report outlining the issues that must be resolved before your trade mark can move forward.

Lack of Distinctiveness (section 41)

This is, hands down, the most common reason for rejection. For a trade mark to be registrable, it needs to be inherently distinctive, that is, capable of setting your goods or services apart from others in the market.

Marks that are too descriptive, generic, or made up of common industry terms tend to get flagged. Think “Best Burgers” for a fast-food business or “Fresh Laundry” for detergent. These marks simply describe the product or service rather than identifying its source.

What you can do- If your mark isn’t distinctive on its face, you may still have a chance by showing evidence of acquired distinctiveness, i.e. proof that the public has come to associate the mark with your business over time. This could include advertising materials, website traffic data, social media presence, customer testimonials, and sales figures. We often help clients build compelling evidence packages to support this type of claim.

Similarity to an existing trade mark (section 44)

If your trade mark is too close to an existing registration or a pending application, especially for related goods or services, the examiner may raise an objection under section 44. The concern here is the potential for consumer confusion.

For example, if you apply for “QuickBites” in relation to food delivery, but there’s already a “QuickBite” registered in Class 43 for restaurant services, that’s likely to raise red flags.

Several strategies can help here-

• Evidence of honest concurrent use (if you’ve been using your mark in the marketplace alongside the other one, without confusion).
• A letter of consent from the owner of the earlier mark.
• Filing for removal of the earlier mark (if it hasn’t been used for three years).
• In some cases, amending your specification to narrow the goods/services or adding disclaimers may help.

Ownership Issues

It might seem straightforward, but ownership problems are surprisingly common. The applicant must be the person or entity who owns the trade mark, that is, the one using or intending to use the mark in trade.

Issues arise when-

• The application is filed under the wrong name (e.g. a director instead of the company).
• Ownership isn’t clearly defined (e.g. joint ownership without clarity).
• The entity applying isn’t legally capable of owning a trade mark.

What you can do- You may be able to correct ownership details with a simple amendment, especially if it’s an obvious clerical error. However, if the trade mark was incorrectly assigned at the time of filing, resolving it may involve a more formal transfer or even a new application. We always recommend reviewing ownership details carefully before submission, and we’re happy to do that for you.

Incorrect Classification

Another common pitfall is misclassification of goods or services. If the classes don’t match your business activities or are too broad or vague, you’re likely to receive an objection.

You can amend your specification to-

• Narrow or clarify the goods or services.
• Delete classes that don’t apply.
• Add exclusions to avoid overlap with conflicting marks.

The key is precision. Use plain terms that clearly describe what you offer, i.e. vague or overly broad descriptions often cause more problems than they solve.

Responding to the objections

When you receive an examination report, don’t panic, but don’t delay either. You’ll typically have 15 months to address the issues before the application lapses. Here’s how to handle it strategically.

• Seek Clarification- If something in the report isn’t clear, you (or your attorney) can contact the examiner directly. Often, a quick conversation can clear up confusion and help you decide the best path forward.
• Make Amendments- Just remember you can’t broaden your application. You can only make changes that narrow or clarify your claims. Some objections can be overcome by minor tweaks-

1. • Fixing ownership or entity names
   • Refining the goods/services specification
   • Adding disclaimers or limitations

• Provide Evidence of Use- If distinctiveness is the issue, prepare a solid evidence package. We recommend including:

1. • How long and where you’ve used the mark
   • Examples of marketing, packaging, signage
   • Sales turnover and customer reach
   • Media mentions or awards. Make sure your evidence aligns with the goods or services claimed.

Strategic tools for more complex objections

Sometimes, dealing with objections requires more than a simple amendment. Here are some other tools you can use-

• Deferment Requests- If the conflict is with a pending or soon-to-expire trade mark, you can request a deferment. You need to apply for deferment before your response period expires, and it’s at the Registrar’s discretion. This puts your application on pause while you-

1. • Wait for the other mark to lapse or be removed
   • Finalize a letter of consent
   • Build a case for honest concurrent use

• Time Extensions- Need more time to respond? You can request a standard extension of up to six months, with a small fee ($100/month). For more flexibility, you can apply under section 224, which allows indefinite extensions if you provide a declaration with valid reasons. Be aware that if your extension request exceeds three months, it will be advertised publicly.
• Dividing the Application-If your application faces objections on only part of the goods/services, consider filing a divisional application. The uncontested goods/services proceed under the parent application, while the contested part is separated out and dealt with independently. This allows you to move forward with at least part of your registration without waiting for the entire dispute to be resolved.

Appeals and Hearings

If you’ve exhausted all your options and still face refusal, you have a final recourse: request a hearing with IP Australia. This gives you the chance to present your arguments and evidence in more detail. In rare cases, you can also appeal to the Federal Court, but this is typically reserved for complex or high-value disputes.

Every trade mark application has its own story, and so does every examination report. Some objections are simple to fix; others need a more strategic approach. What matters is how you respond.

At our firm, we take pride in helping businesses navigate the trade mark process with confidence, from the first application to the final hurdle. If you’ve received an examination report and need help figuring out the best way forward, we’re ready to step in.

Let’s get your mark back on track, and on the Register where it belongs.