Most applications attract an examination report. It is a stage in the process, not a rejection, and the great majority are overcome.
Read which ground you are facing
- Section 9, absolute grounds. The mark is said to be descriptive, generic, or otherwise devoid of distinctive character. The answer is either that the mark is in fact suggestive rather than descriptive, or that it has acquired distinctiveness through use.
- Section 11, relative grounds. The Registry has cited earlier marks it considers similar. The answer turns on comparing the marks as a whole, the goods or services, the channels of trade and the class of consumer, and on distinguishing the cited marks.
What a good reply contains
- A ground-by-ground response rather than a general denial
- Where distinctiveness is in issue, evidence of use: invoices with dates, advertising spend, GST returns, packaging, social media reach, press coverage, and an affidavit setting out the date of first use
- Where cited marks are the problem, a clear comparison table and, if available, evidence that the cited mark is abandoned, removed, or restricted to different goods
- An offer to amend the specification, narrowing the goods or services to remove the overlap. This is often the quickest way through and it is under-used
The deadline is real
A reply is due within 30 days of receipt of the examination report. If no reply is filed, the application is liable to be treated as abandoned under Section 132. Restoring an abandoned application is possible in some circumstances but it is far harder than replying on time. Check the Registry portal regularly; reports are issued electronically and are missed surprisingly often.
A reply is due within 30 days of receipt of the examination report. If no reply is filed, the application is liable to be treated as abandoned under Section 132. Restoring an abandoned application is possible in some circumstances but it is far harder than replying on time. Check the Registry portal regularly; reports are issued electronically and are missed surprisingly often.
After the reply
If the Registrar is not satisfied, a hearing is fixed. If you succeed, the mark is advertised in the Journal, and then a third party has four months to file an opposition in Form TM-O. Opposition is a separate, fuller contest with pleadings and evidence, and it is where a genuine conflict is actually decided.
A practical note
If the cited mark belongs to a business in a genuinely different field, a negotiated consent or coexistence agreement with that proprietor is often faster and cheaper than fighting the objection.