Trademark Application

The shortest time frame is 7 months from the date of lodgement, however this time frame can be longer if the IPA trademark examiner requires extra evidence or raises issues, or an opposition is made by a third party.

Here is what you need to provide.

Where the trademark is something that others are likely to desire to use in connection with their own goods or services, the trade mark application may be rejected unless you can overcome the examiner’s grounds for rejection by providing evidence of use.

We would look at section 44(4) of the Trade Marks Act 1995 to show “prior use” i.e. that you were using the marks before the person who registered the trademark; or section 44(3)(a) for “honest concurrent use” to show you both use the same marks at the same time without the intention of copying each other; or section 44(3)(b) if there were other circumstances i.e. if you have the other person’s permission or are a subsidiary or related company.

The following are likely to come up as a rejection in the examiner’s report:

• kind – including the name of the goods or services and any component which indicates the size or type of goods or service. For example, ‘sedan’ for cars.
• quality – laudatory words which are commonly used by traders to extol the virtues of their goods or services. For example, ‘superior’, ‘good’, ‘best’ and ‘number one’.
• quantity – indicating quantity, including reference to numerals, are needed to indicate volume, area, model or batch number, and would be unlikely to function as trademarks. For example, ‘25s’ for cigarettes.
• intended purpose – using words which describe the function of the goods or the result of a service are not capable of distinguishing. For example, ‘sticks to metal’ for glue; ‘roach-free’ for a pest control service.
• value – using words which emphasise the worth, importance or value of a product or service. For example, ‘worth their weight in gold’.
• time of production – trademarks which refer to a time frame when the goods were produced or when the services are to be available. For example, ‘ready in one hour’ for dry-cleaning services.
• geographic origin – geographical names can potentially be registered, but traders will generally not be able to obtain a monopoly on the name of a place or region with a reputation for the designated goods or services unless overwhelming evidence of use is provided. For example, ‘Hunter Valley’ for wines
• surnames – can be difficult to register depending on how common the surname is.

The IP Australia examiner will consider whether the goods or services are similar by looking at:

• What the goods/services consist of
• The origin of the goods/service
• The purpose of the goods/service
• If the goods are usually made by one manufacturer
• If the services are usually provided by one and the same business or person
• If the goods are distributed by the same wholesale houses
• If the goods/services are provided form the same sources, during the same season, in the same area or district and to the same customers
• If the manufacturers, distributors or providers of the goods/services consider themselves to belong to the same trade.

IP Australia have indicated that ‘metal blinds’ and ‘awnings’ fall into different classes but are considered to be similar goods. Same with ‘business management consulting’ and ‘financial management’ – different classes but considered similar services. Computers fall under goods and ‘computer programming’ falls under services, but is considered to belong to the same trade.

No unfortunately IP Australia does not refund the application fee and neither do we. There is no guarantee that we will be able to convince the examiner where you do not have sufficient evidence. However, we will work hard to get a positive outcome and will warn you of the potential issues where we think there may be a potential rejection. It sometimes depends on the examiner you get.