Overcoming an Earlier Cited Trade Mark in an Adverse Report
Navigating the complexities of trade mark applications can be challenging, especially when faced with an adverse report citing an earlier trade mark. However, with the right approach, it is possible to overcome these hurdles and secure your trade mark registration.
Understanding Adverse Reports
An adverse report is issued by the trade marks examiner at IP Australia when there are issues with your trade mark application. Common issues include:
Lack of distinctiveness: Your trade mark isn’t unique enough to distinguish your goods or services. This is usually when the trade mark describes your goods or services and therefore is a name that another business might reasonably need to use, e.g. “Best Kitchen Renovations Melbourne”. This ground could also be raised if you’re seeking to register a common first name and/or surname, or a geographical name.
Similarity to existing trade marks: This objection could be raised if your trade mark application is too similar to a prior trade mark claiming the same or similar goods and services.
Ownership issues: Less common, however if the identified owner cannot legally own the trade mark, then this objection will be raised. It is imperative to ensure correct ownership of a trade mark to avoid this issue.
Incorrect classes of goods and services: If the classes you have selected are too broad or incorrect, the examiner will raise an objection. The examiner will often provide recommendations to remedy this issue. Overcoming these grounds of objection is often inexpensive and simple.
Responding to an Adverse Report citing an earlier trade mark
If you receive an adverse examination report citing another trade mark is blocking your own application, it is critical to respond promptly and efficiently. If you launch your brand without overcoming this issue, you may be at risk of infringing that trade mark. Starting the process of overcoming an earlier cited mark early is important because it means you have time to try inexpensive and easier options, and it also provides you with sufficient time if you need to prepare your response, for example collating evidence of earlier use in the trade mark.
Below are some strategies available to respond to an adverse examination report citing an earlier trade mark:
Seek Consent: If both businesses use the trade mark in different industries or fields and there is a potential for coexistence without consumer confusion, you can seek the consent of the owner of the cited mark. Seeking consent is often inexpensive and easy where both businesses operate in different space.
File a Non-Use Application: If the cited mark has not been used for several years, you may seek to have the trade mark removed. Filing a non-use application is inexpensive and could be a quick way to overcome the issue of the cited mark. However, if the owner of the trade mark objected to the non-use application, you would then need to engage in negotiations with them to seek their consent and coexist.
Occasionally, the owner will not engage in negotiations and choose to engage in a full opposition process to the non-use application. You can withdraw a non-use application early if this is the case, or engage in a more costly process to try to get the trade mark removed for non-use. If a trade mark has not been used, typically the owner will not risk the opposition process and will engage in negotiations.
Provide Evidence of Use: If you have been using your trade mark for a number of years and your use either pre-dates the cited mark filing date or was honestly used during the period of registration for the cited mark, you could provide evidence of your use in the trade mark. You will need to demonstrate how your trade mark has been used in the market, including providing sales figures, market share, advertising expenditure, and how your trade mark is used in connection with your goods and services.
Request Deferment: If the cited trade mark is pending or has a status of “Expired - Renewal Possible”, you can request your trade mark application be deferred. This allows you to wait until the status of the cited trade mark changes. If the cited trade mark lapses, your trade mark would then be accepted without needing to employ any of the above strategies.
Seek Advice from a Registered Trade Marks Attorney
Overcoming an earlier cited trade mark in an adverse examination report requires a strategic approach and a thorough understanding of the issues raised. Engaging a registered trade marks attorney can provide you with expert guidance and increase your chances of successfully overcoming a cited trade mark. Contact us today if you have a cited trade mark that is blocking your trade mark application.