I received an adverse examination report. Why has my trade mark application been declined?

While undertaking their operations, not-for-profit organisations and charities often use or develop intellectual property such as a logo or some other form of trademark. If managed correctly, intellectual property can be used as an asset for the organisation, so it is natural to want to protect it. In the case of a trademark, this can be done by through registration. However, it is possible that a registration application won’t automatically be accepted, and may instead be subject to an examination report. 

There are three main reasons why your trade mark application might receive an examination report:

1. your mark closely resembles an existing mark on the Trade Marks Register. This could be an existing registration or an earlier-filed application;
2. your mark is too descriptive of the goods or services with which you use (or will use) your trade mark; or
3. the goods or services claimed in your application are incorrectly classified.

The examiner’s objections are only rarely fatal, and we can help you to overcome them so that your trade mark application can proceed to approval.

While the recommended actions would depend on the examiner’s specific objections, some of the possible approaches for overcoming the common objections could include:

• providing examples of 'prior use' or 'honest and concurrent use' of your trade mark;
• making legal submissions about the dissimilarity of your trade mark to the cited mark, or the dissimilarity of the goods/services of your trade mark to the cited mark;
• obtaining the cited mark owner's consent to your application becoming registered;
• making selective changes to the goods or services claimed; or
• if needed, altering your proposed trade mark so that it is more distinctive of your goods or services.

If you have received an examination report, please contact our IP & Technology Team. We will contact you to obtain a copy of the examination report. 

We will then provide an initial assessment of our recommended responses and an estimate of the costs for overcoming the examiner’s objections.