Responding to Adverse Reports
If your trademark application is deemed unfit for registration, you will receive adverse reports from your examiner that specifies the grounds for rejection. The three main grounds for rejection include:
- The trademark in question is not distinctive
- The trademark in question consists of a generic term
- The trademark in question is identical or confusingly similar to another registered trademark
Your application may also be rejected with adverse reports if your proposed trademark is considered scandalous, immoral, or deceptive in nature. The following article outlines the main reasons for which your application will receive adverse reports be rejected, and how to remedy the admission of adverse reports.
Adverse Reports for Non-Distinctive Trademarks
Your trademark will be more or less eligible for registration based on its ‘strength’. The more distinctive a trademark, the more strong and defendable it is. When a trademark is not distinctive, it is considered to be too weak to be registered unless you, as the user, can prove consumer awareness and recognition.
Strong marks include memorable, unique words, including those that are made up or those that are non-related to the product or service that they identify. For example, Polaroid is a coined word, Apple is an arbitrary term, and Ford Mustang is suggestive of product character and quality without being explicitly descriptive. All of these marks have been deemed strong and memorable, and have been classed as ‘inherently distinctive’.
Weak marks include generic terms or marks relying purely on description. For example, Healthy Favourites and Beef & Brew both describe a key quality, ingredient, or characteristic of the goods they identify. It is true that many businesses use weak trademarks because they wish to provide information about the product or service to the consumer. For example, consumers immediately understand that Healthy Favourites is a range of health-conscious convenience food.
A weak mark may acquire consumer awareness through extensive sales and marketing: consumers will start to associate the name with a particular source. This is known as secondary meaning. Should you be able to prove consumer awareness in your application, you might still achieve registration.
The decision of what makes a strong trademark can be difficult to predict and often becomes the crucial point in settling disputes between the applicant and examiner. Your examiner may recommend that you remove the descriptive element of your mark in order to make it more distinctive.
Should you attempt to register a generic term, you application will immediately be rejected and you will receive adverse reports. This is because a generic term is a word used to describe an entire class of goods and services. For example, ‘computer’, ‘escalator’, and ‘microphone’ are all generic terms and cannot be registered as trademarks. Consumers associate these words with the product, not the trader, and so these terms cannot be deemed distinctive.
If IP Australia granted trademark protection to generic terms, then a single trader would gain a monopoly over the market, as all other traders would be unable to use this common to term to refer to their own products or services. Your trademark can include a generic term, but it cannot wholly consist of one. If you include a generic term in your application, you will be required to disclaim your exclusive right to that element of your trademark.
Adverse Reports for Similar Trademarks
If you mark resembles or is identical to another registered trademark, it cannot be registered, according to Australian trademark law, and you may get adverse reports. This is so consumers are not confused by similar marks and so cannot identify the specific source of goods or services. Your mark must only be dissimilar to other marks within the relevant marketplaces: for example, you wanted to register your trademark for handbags and a similar mark was being used for hammers, you would be unlikely to be infringing on the rights of the other holder. This is because consumers of hammers are unlikely to be confused if they see a similar mark on a handbag.
This standard is known as ‘likelihood of confusion’ and is a foundation of Australian trademark law. Your examiner takes many factors into account when they are considering the likelihood of confusion. The most important of these factors is essentially the similarity of each mark as compared to the similarity of goods or services, and the degree of care taken by the consumer when purchasing the goods or services in question. In addition, the examiner will judge your intent in using the similar mark, and whether confusion has already occurred.
Bear in mind that the examiner will take note of similarities in appearance, sound, and meaning.
Responding to an Adverse Report
If you are issued with adverse reports, this does not mean that your application is automatically rejected. Instead, adverse reports outline the grounds for rejection, and provides you with the opportunity to remedy or dispute them. You must respond to adverse reports within six months of the issue date, or your application will be declared abandoned.
We can assist you in understanding and responding to adverse reports. One of our trademark professionals can help you in compiling and filing your evidence or in remedying any inconsistent factors on your application form. Please contact us with any queries in reference to adverse reports or trademark registration.
Once you have responded to your adverse reports, one of two things will happen:
- Your response does not overcome all of the objections raised by your examiner, and so a final refusal is issued. You can overcome this final refusal by making a court appeal.
- Your examiner raises no further objections to your application or your response overcomes all objections, and so your application is approved. Once you have been approved for registration, your application will undergo a three-month period of opposition, in which any other trademark owner can object to your registration on grounds of infringement or inappropriateness. If you pass through this period without opposition, your mark will be registered and you will gain the rights of a registered trademark holder.