You may receive an adverse report during the course of a trademark application. An adverse report is only issued if your mark is not in order for acceptance. This report will describe the grounds for rejection, and it will often outline a number of ways to improve your mark so that it may be successfully registered.
What is an Adverse Report
An adverse report is essentially a document that outlines the reasons that your trademark is unsuitable for registration. The most common grounds for rejection include:
- Your trademark fails to describe your products or services.
- Your trademark is overly descriptive or contains words or phrases that other traders with similar products and services are likely to use.
- Your mark is identical or confusingly similar to another pre-existing mark.
- Your mark consists of a generic term and so cannot be registered.
If you receive an adverse report, it does not mean that your application has automatically failed. Instead, you are given a period of time in which to remedy the grounds for failure. Responding to an adverse report is important. Your response must go to IP Australia, the governing body for trademark law. If you fail to respond, your application will cease and your mark will not be registered.
It is prudent to seek out the advice of a professional trademark practitioner when responding to an adverse report. Your trademark professional will be able to provide you with further information and steps for overcoming the failed adverse report grounds.
In order to overcome the grounds outlined in an adverse report, you may have to compile an affidavit or declaration and documentary evidence that proves your mark is suitable for registration. You might include information such as:
- The current and intended use of your trademark
- The length of time you have used your trademark for
- The ways in which your trademark is different from other marks
IP Australia requires that any long or complex arguments be submitted in writing. Your trademark professional can assist you in compiling this evidence. Similarly, you may want to refute the grounds for rejection. Arguments against rejection are required to be submitted in writing to IP Australia. A trademark professional can assist you in creating an argument against the grounds for rejection.
Adverse Report Trademarks in Australia
Once you have submitted your evidence, your application will be reconsidered. However, sometimes the additional evidence is not sufficient, and your application will still be up for rejection. If this happens, you can elect to have the matter heard by a registrar. If this hearing is unsuccessful to you, the only other option available to you is that you appeal the registrar’s decision before the Australian Federal Court.
If your additional evidence is successful, your application will move on to acceptance and you will undergo a period of opposition. If you are unopposed, your mark will be successfully registered.
Adverse reports can be confusing, and compiling an appropriate response is a tricky task. We can assist you in compiling your evidence and completing any necessary submissions to IP Australia. If you require it, we can even assist you in preparing your argument to be heard by a registrar.
Adverse Report Time Frames
If you receive an adverse report, you have a time frame of 15 months from the issue date of the report to forward your application to acceptance. This includes the time it takes you to respond to the report, as well as the time it takes for a team of examiners to deliberate your response. If your response does not suffice, you may receive a second adverse report with further grounds for improvement. Due to the lengthy, complex process, you should issue your response as promptly as possible in order to permit yourself sufficient time to overcome the grounds for rejection.
Should your application cease due to a lack of response sometime during this 15 month period, you are able to apply for an extension: if you are successful, your trademark application will be reinstated. Prompt response is the best option: there are fees that go along with time extensions.
Once your trademark registration application has been lodged, IP Australia will examine your application to determine whether or not your trademark is registerable. The registrability of your mark is determined by a number of requirements outlined in the Trademarks Act Australia 1995. A trademark professional can help you file your application in accordance to these requirements.
Taking the Headstart Path to Avoid an Adverse Report
We recommend that you undergo the Headstart procedure when you are applying to register your trademark. This process can be more economical and efficient that carrying out a trademark search and filing a subsequent trademark application. You can avoid the costs associated with trademark searches if your take the Headstart path.
The Headstart procedure involves two separate stages. During the first stage, we file a draft application for your trademark registration. Within five business days, an examiner will contact us with an initial impression of whether your mark is suitable for registration.
Part one of the Headstart produre involves a drop-down list, and so we cannot be specific in describing the connection between trademark and products or services. Once we commence part two of the procedure, however, we can request to make an amendment to the application. This amendment can be made providing that the changes do not include a description that is not included within the scope of the drop down list. We can include non-specific terms that are specified at a later stage in the application.
If you receive a negative response, you can choose to drop your application, or you can decide to refute the matter by producing evidence of your use of trademark. This evidence must include the extent of your use of your mark, including the length and manner of use.
Application examiners reserve the right to issue adverse reports even if your Headstart application has received a positive response. Keep in mind, too, that there are some trademarks that cannot be used in the Headstart procedure. These include:
- Special types of signs and non-traditional trademarks, such as colours, shapes, scents, and sounds;
- Defensive, certification, or collective marks;
- A series of trademarks;
- Divisional applications.