Australian Trade Marks: How to respond to an Adverse Examination Report
A guide to responding to an Adverse Examination Report for trade mark registration.
Receiving an Adverse Examination Report from IP Australia can be frustrating because it delays registration of your trade mark in Australia. However, this does not need to be seen as a setback. Rather, it is a procedural step that means the Examiner has identified issues that need to be resolved before your application can proceed. The strategy and quality of your response will directly influence whether your trade mark is accepted for registration.
This guide outlines the key steps for preparing an effective response to an Adverse Examination Report.
Step One: Read the report carefully and identify the issues
The first task is to identify exactly what the examiner is objecting to under the Trade Marks Act 1995 (Cth). An Adverse Examination Report usually outlines one or more objections and may relate to matters such as:
- Lack of distinctiveness
- Similarity to earlier marks
- Unclear specifications
- Goods or services descriptions
- Procedural issues
- Formality issues
Some objections may be quickly addressed by following the Examiner’s suggestions. However, accepting an Examiner’s recommendation without understanding the legal consequences may unnecessarily restrict your scope of protection. Before accepting to delete or modify your specifications, it is advisable to seek legal advice at this stage to avoid weakening your trade mark.
Other objections may raise more substantive questions that require a more considered response, for which seeking legal advice is necessary.
Step Two: Understand your response and acceptance deadlines
The First Adverse Examination Report states the acceptance deadline of your trade mark application. This is the date by which the trade mark must be accepted. Any response should be filed at least 20 business days prior to that deadline. This timeframe allows the Examiner adequate time to consider the response and provides a buffer in the event that a further response becomes necessary. These deadlines are strict and missing them can result in the definitive lapse of your application.
We recommend recording the deadline and addressing the objections as soon as possible to anticipate delays in the process. In limited circumstances, you may request a deferment of the application or make an application for an extension of time.
Step Three: Seek strategic advice
An Adverse Examination Report is a legal document that may contain nuanced reasoning. It requires a correct interpretation of legislation, examination practice, and case law.
The Examiner’s role is to apply the law, not to guide your commercial strategy or advise you on your rights. Therefore, engaging a qualified intellectual property practitioner at this stage is highly advisable, particularly when substantive objections have been raised.
At the initial stage, an experience trade marks practitioner can help you to:
- Analyse the examiner’s reasoning
- Assess the basis and extent of each objection
- Identify a legally viable response strategy
- Prevent unnecessary limitations of your scope of protection
Available strategies often extend well beyond what the report mentions. Therefore, carefully considering your options with a legal professional may save significant time, money, and better protect your intellectual property rights.
Step Four: Develop and implement a response strategy
There is rarely only one way to respond to an Adverse Examination Report. Once the appropriate strategy is identified you may implement it.
Some examples of strategic responses include:
- Amending the application: a strategic modification of the specifications may resolve an objection by refining the goods or services description, adjusting the language, or limiting the specifications. However, modifications must be carefully assessed to avoid unnecessary loss of protection.
- Filing submissions: if the Examiner may have incorrectly applied legal principles or misinterpreted the application, filing a structured argumentation may resolve the issue. This involves precisely referring to legislative provisions, examination practice, and recent case law.
- Submitting Evidence: in certain cases, providing evidence of use may be what is needed for acceptance of your trade mark. However, the evidentiary requirements are strict and require the careful selection and presentation of dated, reliable materials that clearly demonstrate genuine commercial use of the mark. Filing inconsistent evidence may lead to rejection of your application.
- Seeking consent: Obtaining consent from the owner of a conflicting prior mark can resolve citation objections. However, this strategy entails notifying a potential competitor, which is not always commercially advisable.
- Considering alternative filings: in some cases, considering splitting your application into two parts may preserve your rights while allowing prosecution to move forward on different tracks.
Multiple strategies can also be used at the same time when the situation calls for it. Taking a coordinated approach often speeds up the process and increases the chances of having the trade mark accepted within the statutory timeframe.
Step Five: Plan for possible further communications
Even after a well drafted response, an Examiner may issue a further report. This is common, particularly in complex matters. The trade mark prosecution process is iterative and is not adversarial. The goal is to guide the Examiner to a legally sound position that aligns with your legitimate commercial interests.
The quality and timeliness of responses to the Adverse Examination Reports directly influence the chances of ultimately obtaining registration of the trade marks. Therefore, it may be highly risky to generate artificial or home-made responses, as they may inadvertently concede critical points, introduce legal inconsistencies, or fail to address the examiner’s objections with the level of specificity required under the Trade Marks Act 1995.
Our experts at IP SERVICE INTERNATIONAL manage Adverse Examination Reports on a daily basis and understand the practical and legal nuances of Trade Mark Law. If you would like some guidance, you are welcome to send us your Adverse Examination Report and book a free consultation. We can walk you through the options and help you decide the best way forward.
Contact our Australian Trade Marks Attorney, Quentin Dequiret
