How To Get “Difficult To Register” Trade Marks (Part 1)

A Trade Mark can be initially refused, because of two common events. Firstly, it can be rejected if your Trade Mark is likely to needed by other traders in the ‘normal course of commerce’, for the goods and/or services applied for. Secondly it can be rejected if someone else has already registered (or recently filed an application for) a similar mark to yours AND the goods and/or services are also similar.

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Both events normally happen within 3-4 months after being applied for. This is true for Australian Trade Marks applications as well as many International Trade Mark applications. In some countries the refusals maybe called: “Refusal based on Absolute Grounds (Europe) or “Refusal based on the Trade Mark being ‘Merely Descriptive’” (USA)

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It is important to note that a Trade Mark Application is not a Registered Trade Mark, merely an application for a Trade Mark. It can be rejected and you lose your filing fee. Just like you can make an application for a driver’s license, you may get it or you may not, depending on several factors. The same applies with Trade Mark Applications.

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In March 2015 there were 6321 Trade Mark applications filed in Australia, six months later in August 2015, 1898 of those applications were still refused and had been issued an ‘Adverse Report’ . This is about a 31% refusal rate. The most common refusal is ‘Trade Marks likely to be needed by other Traders‘ – (as used by Australian Trade Mark Examiners).

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To illustrate how we typically overcome this type of refusal, we will use the application for the Trade Mark FISH THE DEEP (words) for fishing charter and related services owned by CM & T Quality Products Pty Ltd, a Gold Coast company (TM 1549084 ). Common sense would say this MIGHT be a phrase needed by other traders. As predicted in our Trade Mark search report, the Government Examiner did raise this issue and refused the application, but we already had a strategy to overcome this.

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How we overcame the refusal was as follows:

1. We used persuasive legal argument and case law to point out to the Examiner that the Trade Mark was not DEEP SEA FISHING but FISH THE DEEP, and that other traders would not need to use the phrase in the normal course of trade.

2. Provided detailed evidence of ‘use as a trade mark’ for the trade mark and the services applied for, in Statutory Declaration format.

3. Using the combined strategies provided in (1) & (2) above, we overcame the objections. The Trade Mark FISH THE DEEP (word) is now a Registered Trade Mark.

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In our next article, we will explain how we overcome a refusal if you have Trade Marks cited against your been Trade Mark, during the application process. IP Wealth® are the experts in getting “difficult to register” Trade Marks registered. If you need help getting your Trade Mark registered in Australia, or if you are curious if your Trade Mark can be registered, please call 07 5531 3609 and speak with one of our friendly team. We offer a free Discovery Session for all new clients.