If you received an adverse examination report issued by IP Australia, don’t despair, it’s not the end of the world. Usually this is issued 4 months after lodging a standard trademark application. The assessment time-frame can be expedited. An examiner at the Trademark Office will assess your trademark from a procedural viewpoint.
Most objections occur for many three main reasons:
- You have the wrong class, wrong goods or services.
- Section 44 issue – Your trademark is in conflict with a prior trademark.
- Section 41 issue – Your trademark isn’t a registrable term under the Trademark Act.
Our Trademark Attorneys routinely review examination report and and independently assess them, work out whether the objection(s) are valid or arguable, and work out your best option. Our Trademark Attorney firm can quote to prepare a response in the right format that optimises your chances of overcoming the objection raised in an adverse report. Usually there are a few options, it’s just a matter of choosing one with the least risk, and the one which optimises your chances without reducing your eventual trademark rights.
If you fill out this form, an experienced trademark lawyer at our firm will get in touch to review your examination report, your trademark application, and work out your best option(s). A trademark lawyer will also work out which option has the best legal value and if an option poses litigation risk for you.
What doesn’t IP Australia check?
It is important to understand that they will not check the legals of your trademark. For example, did you miss including something important? Perhaps there is some cover that could allow a copycat to get away with it? Or did the chosen classes you include really cover your business?
IP Australia will not advise you at all. So if you are not trading in the correct manner and following all your requirements and obligations under the Trademark Act, then your case against a copycat might fail, or you could find that a third party applies to have your trademark registration removed for not meeting the trademark requirements.
The good news is our Attorneys have 23 years experience to assist you, and we’ll usually find a way.
What happens if the Trademark is Accepted?
If accepted, then there’s a 2 month opposition period, where anyone can oppose registration on the basis that other criteria haven’t been met. Oppositions can run for 1-2 years, and are costly to defend. Fortunately, trademark oppositions are rare. A Trademark Attorney can optimise your chances of ensuring you don’t lose rights to an opponent.
If no oppositions are lodged by third parties, then the trademark is registered for 10 years. During which time you should be watching the market for unauthorised use of the trademark.
It is also critical that you continuously meet your obligations on trademark trading requirements as defined by the Trademark Act.
Your Trademark Attorney can assist with this by checking how you use the trademark on your website, packaging, signage, uniforms and so forth.
Contact us today by filling out our Contact Form, or calling us on 1300 138 802.
