About Trademark Examination – The Path to Registration

After your trademark application has been filed, it will automatically come up for examination by an IP Australia Trademark Examiner, usually within two to four months of filing (unless expedited). What happens next can be difficult to predict, but in this article we’ll try to give you a sense of how things could go.

The best case scenario

The best case scenario is that the Examiner informs you of acceptance of your application without objection. It’s then advertised in the Official Trade Marks Journal, and – if there are no objections from other traders – it is registered after the two month advertising period expires without a notice of intention to oppose being filed.

Adverse reports

In many cases, at least one ‘Adverse Report’ is issued by the Examiner. The report contains a written explanation of the grounds upon which the application cannot be accepted.

The grounds cited might be formal grounds. An example of a formal objection is when the Examiner notes that the trademark is for Class 7 (machine tools), but should be in Class 8 (hand tools).

More usually however (especially if you’ve decided to engage an IP lawyer to prepare your application), the Examiner will cite a ‘substantive’ reason for rejecting your application. The most common of these grounds are that your trademark is ‘not capable of distinguishing’ your goods and services (section 41 of the Trade Marks Act) or that your trademark is ‘likely to deceive or cause confusion’ in relation to another trademark (section 44).

Responding to examiners’ reports

When you receive an Examiner’s Report, you have a few options if you want to challenge it. Common options include:

  • contesting any statements or arguments contained in the report;
  • providing Evidence of Use in support of the application;
  • amending your application to address the objections raised.

If you respond to a report, the Examiner may issue a second Report, and so on until they’re satisfied that you’ve overcome his or her objections.

Conclusion of the process

If you’re unable to convince the Examiner that your trademark can be accepted, you'll have the right to appeal. In that case, you’ll be given the opportunity to present your arguments orally in a hearing.

If you’re able to overcome the Examiner’s objections, your trademark will be accepted for registration. This kicks off a two month advertising period in which others will have an opportunity to oppose the registration of your trademark. Assuming that your mark isn't opposed, it will be registered after that time.

Trade Marks & BrandingDavid KweiTrademark Prosecution