So, you have filed your Australian trade mark – great! But now you have received an Examiner’s Report – where to, from here?
The Examiner may have raised citations i.e., earlier similar marks to your mark, which are currently blocking you securing acceptance of your trade mark. All is not lost, there may be avenues around these.
Firstly, it may be possible to submit arguments to the Examiner on basis that there are differences between your mark and the cited mark(s) such as, phonetical, visual or the idea or concepts of the respective marks. It may be possible to submit arguments to the Examiner on basis that there are differences between the goods and/or services covered by your mark and the cited mark(s) such as, the nature of the goods, the use of the goods and the different trade channels.
Secondly, if arguments do not persuade the Examiner or, there is no room to even make such arguments, there are still other avenues to explore; approaching the owner of the cited mark for a letter of consent, may be a possibility. If the latter, is not available, and you have used your trade mark, prior to the filing date of cited mark, you may be able to file evidence of your prior continuous use. Alternatively, if you commenced use of your trade mark after the filing date of the cited mark, and have used it for some time, you may be able to file evidence of your honest concurrent use. To establish either, prior continuous use or honest concurrent use to overcome the citations, the evidence of use of your mark in the market, must be filed in a Declaration, including annual sales/revenue figures and advertising figures, with attached examples of your use.
The Examiner may have raised a registrability objection under subsection 41(4). Here too, you may be able to overcome this by filing evidence of use of your trade mark, in the market to establish that your trade mark is capable of distinguishing your goods and/or services from your competitors. That is your customers (and other consumers) know your brand in relation to your goods and/or services., Here too, evidence of the use of your mark, in the market must be filed in a Declaration, including, annual sales/revenue figures and advertising figures, with attached examples of your use.
Even if none of these options are a possibility to overcome the citations, you may always just be able to defer your application, pending the determination of the cited mark, if the cited mark(s) is pending
Of course, if you would like help with any issue raised in your Examiner’s Report on your trade mark, please contact me.