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November 1, 2015Michael

How to Get “Difficult to Register” Trade Marks (Part 2)

If you did not read last month’s article, please click here to read.

Following on from last month and to repeat for consistency, 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.

This second most common form of refusal is “Trade Marks which are similar to other Trade Marks” – (as used by Australian Trade Mark Examiners)

When an application is examined, a complex Trade Mark search is conducted by a Trade Mark Examiner who is well trained in this area. This is not a simple database search, but a detailed search that can range from 30 minutes to several hours. The Examiner is looking for other applications and/or for registrations that are similar to your Trade Mark application, This can be for similar looking Trade Marks , similar sounding Trade Marks, phonetic equivalents, misspelling of Trade Marks , exact matches and everything in between and/or combinations thereof.

If the Examiner locates one of more of these marks, and the goods and/or services are similar to yours, then an objection/s to acceptance of your Trade Mark will be issued. It can be quite common for several Trade Marks to be cited after examination.

When Trade Marks are examined, they are compared with each other in two ways. First, both Trade Marks are compared side-by-side visually. Secondly, if they are deemed to be visually similar, deceptively similar or substantial identical, then the goods and/or services are also then compared. If the Trade Marks are similar or deceptively AND the goods and/or services are also similar, then, the application is provisionally refused.

However, if they find similar Trade Marks but the goods and/or services have nothing to do with your trade mark application, then the application is ‘accepted’ for registration. At this point the application will most likely proceed to registered status in about six months’ time, unless opposed by a third party.

It is always the responsibility of the applicant (i.e. the person or entity filing the trade mark application) to prove that their Trade Mark should be allowed. This is why so many Trade Marks are refused. It is much easier to reject a Trade Mark than accepted it, especially if it is hanging in the balance or if the Trade Mark Examiner is unsure.

IP Wealth® regularly uses the following tactics in overcoming those types of objections:

1. Submitting persuasive legal argument and case law to point out to the Examiner that the Trade Mark is not similar to the ‘cited’ existing Trade Mark(s).

2. Amending the good and/or services to overcome the similarity.

3. Providing detailed ‘evidence of use as a trade mark’ in Statutory Declaration format which pre-dates the Trade Mark(s) cited by the Trade Mark Examiner for the goods and/or services applied for.

4. Prove honest concurrent use, in Statutory Declaration format.

5. Obtain Letters of Consent from the owners of the ‘cited’ Trade Mark(s).

Using the combined strategies provided above, we regularly overcome these objections.

Many of these types of rejections can be overcome by getting a professional Trade Mark search done by IP Wealth®.We have searched over 3000+ Trade Marks since 2004 and are skilled at determining the likelihood of acceptance of a Trade Mark and assessing the risk of these type of objections.This saves you time and money, is confidential, and is essential to the success of any brand.

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 our friendly team. We offer a free Discovery Session for all new clients.