If we look into one of the basics of trade mark registration process, a common but crucial question I often get from clients: “What happens after I file my trade mark application? Will it be accepted or rejected?”

It might sound like a simple question, but the process that follows submission of your trade mark application is anything but one-size-fits-all. Whether your application makes it to the finish line or hits a roadblock depends on several legal checkpoints- So, let’s break it down together, step by step.

The first step is making the Trade Mark Application

Once your application is filed, it lands on the desk (virtual, mostly) of an examiner at IP Australia. From here, the journey of your trade mark begins, i.e. towards acceptance, rejection, withdrawal, or lapsing. Each path has its own rules and consequences.

What Happens When Your Application is Accepted?

Acceptance is a good sign, but not a final decision. You’ll still need to keep an eye on possible opposition. This means your trade mark has passed the scrutiny of the examiner and complies with the Trade Marks Act 1995. So, acceptance is not an instant green light, though, it’s just the beginning of a two-month opposition period.

This is what happens next-

  • Your accepted application is published for public viewing.
  • During this 2-month window (which can be extended), any third party can oppose your registration.
  • If there’s no opposition, or if the opposition is unsuccessful, your trade mark proceeds to registration.

What If the Application is Rejected?

Rejection is not the end; it’s more like a challenge or hurdle. The Registrar (or a delegate) may reject your application if-

  • It doesn’t meet the requirements of the Act (Section 6 and Section 33).
  • There are substantive grounds under Part 4, Division 2, like your mark being too descriptive or similar to an existing one.

But here’s the good part, i.e. you will be given a chance to respond before a final decision is made.

The process looks like this-

  1. You’ll receive a Notice of Intention to Reject.
  2. You’ll have 2 months to reply, submit further arguments or evidence of use.
  3. If you don’t respond, your application is formally rejected.
  4. You can appeal the rejection to the Federal Court or the Federal Circuit Court (Section 35).

Sometimes, rejections are even flagged in the very first examination report, especially for divisional applications or those that are clearly ineligible. But even then, the examiner must allow you the opportunity to be heard (Section 33(4)).

What About Withdrawing an application?

Sometimes, strategic retreat is the best move. If you realize, perhaps after receiving an examination report, that your application won’t likely pass, or you decide to pursue a different brand direction, you can withdraw your application under Section 214.

Unlike a lapse (which may be passive), a withdrawal is final and active. You must make your intention crystal clear (e.g., “I request that my application be withdrawn”).

One key tip would be, don’t confuse withdrawal with non-response. Failing to act can result in an unintended lapse and potentially complicate your future filing strategy.

What If Your Application Lapses?

Trade mark applications are time sensitive. You’ve got-

  • 15 months from filing to get acceptance (Section 37), unless extensions are granted.
  • 6 months after acceptance to complete the process (Section 68 and Reg 7.1).

If you miss these timelines, your application lapses. But don’t panic just yet, there’s a rescue clause. You may be able to revive the application under Section 224 by applying for an extension and paying the required fees.

What factors decide the fate of the application?

The examiner’s goal isn’t to be your adversary, i.e. they’re applying the law. But understanding how they evaluate your application empowers you to proactively strengthen it. Whether your trade mark gets the green light or hits a legal wall depends on several key factors-

  • Distinctiveness– Generic or descriptive marks (think “Fresh Apples” for fruit) are often rejected.
  • Similarity to existing marks-If your mark is too close to a registered one (especially in the same class of goods/services), it can trigger rejection under Section 44.
  • Evidence of use– Sometimes, showing that your mark has built brand value in the marketplace can help overturn initial objections.
  • Procedural compliance– From proper classification to correct formatting, even small technical errors can derail your application.

Requesting a Hearing

If you receive a Notice of Intention to Reject and believe it’s unwarranted, you can-

  • Submit further evidence or arguments, or
  • Formally request a hearing. Your file then moves to the Opposition and Hearings Section.

In the hearing, you or your legal representative can present your case directly. It’s a more involved process but often worthwhile when your brand’s identity is on the line.

Final Thoughts

Filing a trade mark application is more than just filling out a form. It’s a legal process that involves strategic thinking, market insight, and regulatory navigation. Your preparation, responses, and adaptability, and not just your brand, determine whether the Trademark Office accepts your application or raises objections.

As an IP attorney, my role is to guide clients at every stage, i.e. from crafting a strong application to managing responses, hearings, or appeals. Are you unsure if your trademark will be accepted or facing an objection? Don’t navigate it alone, expert guidance can make all the difference. Let’s make sure your brand gets the protection it deserves.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

 

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