When an application is submitted, the government Examiner will check that it complies with all the legal requirements and if the trademark is able to be registered
This process currently takes around four months, a time frame that does fluctuate. Once examination is complete, we will receive either a Compliance Report if there are any problems found, or a Notice of Acceptance if no problems are found.
Compliance Report (adverse)
If an application receives an adverse report from the Examiner, the client can decide not to proceed with the application, which means that the application fee is forfeited and the application stops. However, if the client wishes to respond to the examiner’s adverse report, fees per hour will be quoted to assist the client to write up and file arguments. These are designed to persuade the Examiner to overcome the issues identified. There are two main issues that could arise from the Examiner’s report:
i) lack of distinctiveness (descriptive words such as Ice Cream Parlour for an outlet selling icecream)
ii) laudatory words (Great, Best and Amazing)
ii) trademark application is too similar to an earlier registered trademark (causing confusion in the market place)
iii) geographical names (Bondi, Manly, London, Sydney, New York)
iv) popular surnames (Smith, Jones, King and so forth)
v) deceptive names (Koka Kola for a soft drink, deceptive for Coca Cola)
vi) famous trademarks (Coca Cola, Chanel, Nike)
Notice of Acceptance (approval)
If no issues are found during the government examination of your application, or if you successfully address any issues that are raised, a notice of acceptance will be issued. This is a letter telling you when the application will be advertised in the Official Journal of Trademarks.
The advertisement of acceptance commences a period of time during which other people may lodge formal objections to your trademark becoming registered, if they believe they have grounds to do so. They will have two months from the date of advertisement to file a notice of intention to oppose. Once a notice of intention to oppose has been filed, the opponent must then lodge their statement that sets out the grounds, and particulars upon which they oppose.
If nobody lodges a notice of their intention to oppose, or requests an extension of time in which to lodge their objection, your trademark can then progress to full registration.
Opposition (by third party during public advertising period)
If a third party does oppose the application, the client will be advised and depending on the circumstances, a separate quote for extra work will be quoted at that time. No application or objections are the same, therefore extra consultation fees cannot be pre-determined. The client can either decide to fight the opposition raised by a third party or decide not to proceed with the application at this stage.