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Overcome objections and protect your brand navigating trademark issues

By James Wan

What you need to know (in a nutshell)

  1. A trademark objection is when a trademark examiner at the IP office has concerns about the registrability of your trademark application and raises an objection to registration.
  2. Common objections include goods objections, earlier trademark applications/registrations (referred to as citations by trademark attorneys), distinctiveness and/or descriptiveness objection, real names and specification objections.
  3. To overcome an objection, different options may be available, including submitting written arguments, obtaining a letter of consent, removing some of the goods or services in your application, and seeking advice from a trademark lawyer. The likelihood of success will depend on the extent of the objections.

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Trademark objections may arise when the Intellectual Property Office harbours doubts about the eligibility of a proposed trademark for registration. To address these concerns, applicants may need to submit written arguments demonstrating that the issues have been satisfactorily resolved. Once done, the application can then proceed to approval and successful registration.

Goods objections are among the most common issues the IP Office raises for trademark applications. However, such objections are highly unlikely with our services. We utilise pre-approved goods adhering to all requirements. Should a goods objection emerge during your application process, we will handle it at no additional cost.

Searching the trademark register can help determine if someone has registered or applied for a similar trademark. If, for instance, you intend to register WHEAT-BICS as a mark for breakfast cereals, this could be hindered by existing trademarks such as WEET-BIX covering similar products. Potential registrants need to exercise caution before submitting their applications to avoid unnecessary delays in processing times.

For those considering registering a trademark, the IPAustralia online database offers a wealth of information on existing trademarks. Alternatively, seeking the assistance of an experienced trademark lawyer can greatly ease the process of securing your intellectual property rights as a business owner or entrepreneur. It is advisable to thoroughly explore all available options before pursuing any particular action.

To overcome a trademark objection, it may be necessary to submit a letter clarifying why confusion is unlikely to arise from using similar trademarks. Obtaining consent from the owner of any cited trademarks may also be required. Additionally, removing goods or services from your application that could cause customer confusion can improve your chances of overcoming objections.

The Intellectual Property Office evaluates trademarks on a case-by-case basis when assessing objections. The success of a trademark application is determined by the number of citations raised and the degree of similarity between the trademarks in question. Non-distinctive or overly descriptive marks, such as PRIME, SUPER, and BEST BUY, are unlikely to meet the criteria for distinctiveness required for registration.

Suppose your trademark includes an individual’s name or likeness. In that case, the Intellectual Property Office will need confirmation that this person has permitted you to use their identity as part of your mark. In cases where the individual is still alive, a letter of consent is required. If the person has passed away within the last ten years, a letter from their legal representative or estate is necessary, while a letter demonstrating the fact is needed for those deceased for more than ten years.

The IP Office may request further explanation and clarification regarding the wording used in your list of goods or services.