Most trade mark applications that receive an adverse examination report are not doomed. Too many founders read the letter, see the words “does not meet the requirements” and either assume the mark is dead or file the shortest possible response and hope for the best. Both reactions tend to cost more than getting proper advice at the outset.

What an adverse examination report actually says

A common ground for an adverse report is section 44 of the Trade Marks Act 1995 (Cth) (TMA). It requires an examiner to raise an objection where the applicant’s mark substantially identical or deceptively similar to an earlier trade mark, application or registration, where the goods or services claimed are similar to, or closely related to, the goods or services covered by that earlier mark.

Section 14 of the TMA defines goods as similar to other goods only if they are the same, or of the same description. That is a narrower test than it looks and sharing a class number itself is not enough. Two goods can sit in the same class and still not be similar goods for the purposes of section 44, if what they are, how they are sold, and who buys them are genuinely different.

The instinct to give up (or file something generic) is usually premature

An adverse report sets a deadline: resolve the issues or the application lapses. That deadline pressure is exactly why founders default to one of two responses. Some conclude the mark cannot proceed and abandon it. Others file a response arguing only that their mark looks or sounds different to the cited mark, without genuinely considering if the goods or services claimed are similar under section 14 of the TMA.

Arguing mark similarity alone leaves the class claims completely unaddressed, and if the claimed goods or services are genuinely similar, that argument alone will not get the application through to acceptance. Conversely, assuming the application is unsalvageable skips over the possibility that the classes can be amended to overcome the objection, even if the mark may seem similar to the cited mark.  

How this played out in a recent matter

We recently acted on a matter where a client’s application for a stylised logo mark, covering a range of vehicle parts and accessories in one class, was cited against an earlier registered word mark covering a different type of product, also in the same class: complete recreational vehicles, rather than parts for them. On its face the objection looked serious with the same class and an overlapping word in both marks.

Working through the client’s actual product range against the cited specification told a different story. The client’s goods were component parts, bumpers, panels, chassis components, tow fittings and similar items, bought to modify or repair an existing vehicle. The cited goods were a different type of finished vehicle altogether. A purchaser of the cited goods was not shopping for the client’s goods, and vice versa: different trade channels, different purchasers, different price points, and the client’s goods were not adapted or marketed for use with the cited goods at all.

Rather than arguing mark similarity, or treating the citation as fatal, the response amended the specification to expressly exclude the cited goods from the relevant descriptions, and dropped a handful of listed goods that had no real bearing on what the client actually sold. Everything the client’s business actually needed protected stayed in the specification. What was cut was language that either overlapped with the cited goods or reflected products the client did not make or sell (and had no plans to). The objection was successfully overcome with legal submissions and class amendments, without having to rely on evidence of use or giving up scope the client needed.

Why this takes more than a generic response

Excluding goods or services from a specification is not something IP Australia proactively suggests to applicants. It is not the examiner’s job to redraft an applicant’s claim for them, and a poorly considered exclusion can just as easily give away protection a business will need later. Getting it right requires:

• Reading the actual specifications, not just the class number: the class heading tells you almost nothing about whether two claims are similar for section 44 purposes.
• Understanding how the business actually trades: trade channels, purchaser type and price point all go directly to whether consumers would be confused about the source of the goods.
• Drafting exclusion language precisely: an exclusion has to be specific enough to answer the objection without inadvertently narrowing coverage over products the business genuinely sells.
• Protecting the commercial core first: the goal is a registration that matches what the brand is actually used for, not the narrowest specification that gets past an examiner.

The takeaway

Treating an adverse report as the end of the road, or filing a response that only addresses some of the issues, both risk losing protection the business was entitled to keep. The better approach is to work out, goods by goods, what the business actually needs protected, and build the response around that with accompanying legal submissions.

If you have received an adverse examination report and are not sure how to respond, Camber Law & Advisory can work through the report with you and map out a response that protects your brand as it is actually used in the market. Get in touch for a consultation.

Frequently asked questions

Does an adverse examination report mean my trade mark application will be refused?

No. It means the examiner has identified issues that need to be addressed before the application can proceed to acceptance. You have an opportunity to respond, and many objections, including those raised under section 44, can be overcome through legal submissions, evidence, or amendment of the application.

Can a section 44 objection be overcome without evidence of use?

Yes, in some cases. Evidence of use under subsections 44(3) or 44(4) is one option, but it is not the only one. If the goods or services claimed are not genuinely similar or closely related to the cited mark, narrowing the specification may be able to resolve the objection without needing evidence of use.

Will excluding goods from my specification reduce my trade mark protection?

Yes, but only if it is done carelessly. A well drafted exclusion targets the specific overlap causing the objection while preserving protection over goods and services the business actually sells or plans to sell under the mark. This is why the exclusion needs to be based on a proper understanding of the business, not just whatever gets the application past examination fastest.

What happens if I do nothing after an adverse examination report?

The application will lapse by the deadline stated in the report unless the issues are resolved. Extensions of time are available, for a fee, but they do not remove the need to actually address the objection. Missing the deadline entirely means starting again from scratch, including losing the original filing date.