What To Do If You Receive a Trade Mark Adverse Report from IP Australia?
Receiving a trade mark adverse report from IP Australia can feel overwhelming and frustrating, but it’s important to remember that it doesn’t mean your application is doomed. This guide provides practical advice to help you navigate the process and what you can do to overcome the objections.
What is a Trade Mark Adverse Report?
After you file your trade mark application with IP Australia, an examiner reviews it to ensure it meets the requirements under the Trade Marks Act 1995 (Cth). Usually, it takes 3-4 months from the filing date for IP Australia to examine an. If the examiner identifies any issues, they will issue an adverse report outlining the objections to your application.
Common objections raised in an adverse report include:
- Lack of distinctiveness: Your mark is descriptive of the goods or services you’re offering. For instance, a trade mark application for the term ‘Fresh Apples’ in relation to apples might receive an objection for being descriptive of the goods offered.
- Conflict with an existing trade mark: Your mark is too similar to one already on the Trade Marks Register.
- Incorrect classification or specification of goods and/or services: The claimed goods and/or services are too broad or unclear or incorrectly classified.
The report specifies the objections and allows 15 months from the date of the report to resolve them. It should be noted that the deadline is an acceptance deadline, i.e. the objections need to resolved by that date, and not a response deadline, i.e. merely filing a response by that date will not suffice.
What Are Your Next Steps?
Here’s how you can address an adverse report:
- Understand the Objections:
- Seek Expert Advice:
- Respond Strategically:
- Provide evidence to show your trade mark is distinctive (e.g., proof of use and reputation).
- Amend your application (e.g., narrow your claimed goods or services).
- Argue that your trade mark doesn’t conflict with existing registrations.
- Negotiate a letter of consent from the owner of a conflicting trade mark.
- Manage Deadlines:
Carefully read the examiner’s objections. Look for specific reasons why the application was flagged as this will determine your strategy.
Trade mark law is nuanced. Engaging a trade mark attorney early can save time and increase the likelihood of success. They can provide tailored advice on overcoming objections.
Halfords IP is one of the leading trade mark firms in Australia. Speak to us as soon as you get the adverse report and we can provide you an indication of your prospects of success and recommend the best way forward.
Depending on the objections, you might:
You typically have 15 months to address the objections and achieve acceptance. Extensions of time are available if needed, but additional fees apply.
Can You Request an Extension of Time?
Yes, you can request extensions if you need more time. Here’s what to know:
- Standard Extensions: You can apply for up to 6 months of additional time beyond the initial deadline. IP Australia charges $100 for each month.
- Beyond 21 Months: If 21 months have passed since the first adverse report, you’ll need to submit a declaration explaining the delay and why the extension should be grant
Don’t file your evidence and submissions on the last day. As mentioned above, the deadline is an acceptance deadline, not a response deadline. IP Australia requires that evidence and/or submissions be submitted at least 20 days before the final acceptance deadline, giving examiners sufficient time to review and issue a further report or accept the application by the deadline.
Why Work with Halfords IP?
Dealing with an adverse report requires expertise, strategy, and precision. At Halfords IP, we specialize in helping clients overcome trade mark objections, with decades of experience navigating IP Australia’s processes. We have received numerous awards and are recognized as the top trade mark firm in Australia.
When you work with us, you can expect:
- Clear advice and recommendations: We give clear advice on your options and likelihood of success. We give you a direction, not just a laundry list of options.
- Efficient Communication: We liaise with IP Australia on your behalf, ensuring your case is presented persuasively.
- Strategic Planning: Guidance on amendments, evidence, or negotiation strategies to resolve conflicts.
Don’t Let an Adverse Report Stop Your Application
Receiving an adverse report is a bump in the road, not the end of it. With the right support, many applications overcome objections and proceed to registration.
If you’ve received an adverse report or have questions about the process, contact Aparna Watal.
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