IP SERVICE INTERNATIONAL secures acceptance for AFRICANA BEAUTY Trade Marks under sections 41(4) and 44(4) Trade Marks Act 1995
A family-owned Australian retail business had traded under the same brand since 2011 from its local store and built more than a decade of use and goodwill before expanding into online and international sales.
Before engaging IP SERVICE INTERNATIONAL, the business had attempted to secure trade mark protection itself, but the applications filed with IP Australia did not progress as intended. The Examiner's initial refusal of their trade mark was deeply concerning for a family that had built its business around the retail brand for more than a decade.
Our Strategy
After reviewing the matter, Quentin Dequiret and Max Steinhausen refined the scope of protection sought through two new trade mark applications and developed a coordinated evidentiary strategy to address the Examiner's objections under sections 41 and 44 of the Trade Marks Act 1995, concerning both distinctiveness and earlier registered marks.
The evidence was structured to demonstrate when the brand was conceived and adopted, the extent and continuity of its use in Australia, the scale of the business conducted under it and the circumstances in which the brand had coexisted with the earlier registered marks. The evidence supported arguments based on the client's prior use, honest adoption and concurrent use of the brand as well as acquired trade mark distinctiveness. The key was to translate the client's longstanding commercial use into evidence that directly addressed the statutory grounds underlying the Examiner's objections under sections 41 and 44 of the Trade Marks Act 1995.
The Outcome
Following the submission of the declaration and accompanying evidence of trade mark use, both Australian trade mark applications were accepted by IP Australia for registration under the provisions of subsections 41(4) and 44(4) of the Trade Marks Act 1995. The result cleared the examination stage and provided a pathway to registration for the client's longstanding family brand.
Key Takeaways
This matter shows the importance of reassessing both the filing strategy and the evidence where a longstanding business encounters examination objections. The outcome turned on aligning the scope of protection with the client's actual business activities and presenting the history of the brand in a form that directly addressed the legal objections raised.
IP SERVICE INTERNATIONAL advises Australian and international businesses on securing, strengthening and defending valuable trade mark rights in Australia, with strategic, commercially focused advice tailored to each client's business and brand.
If you have received an Adverse Examination Report under sections 41 or 44 of the Trade Marks Act 1995 or other trade mark objection, contact our experts to discuss strategies for protecting your trade mark or explore our other IP Success Stories.
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