Adverse reports and objections — what to do

If you have received an adverse examination report (an objection) or a notification of possible refusal from IP Australia, take a breath. It is not the end of your application. Reports like this are a routine part of the process, and a great many of them are overcome every day.

An adverse report is best understood as the examiner opening a conversation rather than slamming a door. They have looked at your mark against the law and flagged something they want addressed before the application can be accepted. Your job, with our help, is to give them a sound reason to withdraw the objection.

What an adverse report actually is

After you file, an examiner at IP Australia checks your application in two ways: the formalities (is everything filled in correctly) and the substantive grounds (can this mark legally be registered). If something needs addressing, they issue a written report setting out each ground and the section of the Trade Marks Act 1995 it relies on.

The report is specific to your mark and your goods and services. Two applications for similar-looking brands can attract completely different objections depending on the classes chosen, the wording of the specification, and what is already on the register. That is why a generic response rarely works and a tailored one usually does.

The common grounds of objection

Most reports raise one or more of a small number of grounds. The ones we see most often are below.

Ground	Section	What it means	Typical way to overcome it
Not distinctive	s 41	The mark is too descriptive of the goods or services, is laudatory (“best”, “premium”), or is a common surname or place name	Evidence of use and acquired distinctiveness, legal argument, or limiting the goods and services
Conflict with an earlier mark	s 44	Your mark is substantially identical or deceptively similar to a mark already on the register for similar or closely related goods and services	Consent from the earlier owner, evidence of prior or honest concurrent use, limiting the specification, or waiting for the cited mark to lapse
Likely to deceive or confuse	s 43	A connotation in the mark could mislead consumers about the nature, quality or origin of the goods	Amend the specification or argue there is no relevant misleading connotation
Prohibited or prescribed signs	s 39	The mark contains protected matter such as flags, “Patent” or “Registered”, or other restricted insignia	Remove or amend the offending element
Scandalous or contrary to law	s 42	The mark contains offensive matter, or its use would breach another law	Usually difficult; may require amending the mark

Section 41 — “your mark is too descriptive”

This is the distinctiveness objection. A trademark has to work as a badge of origin, telling customers that the goods come from you and not from a competitor. Words that merely describe the product, praise it, or name where it comes from struggle to do that job.

For example, “Melbourne Coffee Roasters” for a coffee business, or “Fast Clean” for a cleaning service, are the kinds of names that often draw a section 41 objection. The good news is that descriptive marks can sometimes be registered with evidence that customers have come to recognise the name as yours through use over time. The longer and more prominent your use, the stronger that argument.

Section 44 — “there is a similar mark already”

This is a citation against an earlier mark. The examiner is not saying you have copied anyone; they are protecting the register from confusingly close marks. Options here include obtaining a letter of consent from the earlier owner, showing that you used your mark before the cited one was filed, arguing honest concurrent use, narrowing your goods and services so the two marks no longer overlap, or simply waiting if the cited mark looks likely to lapse or be removed.

A clearance trademark search before you file is the best way to avoid a section 44 surprise in the first place. If you would like to understand how marks are compared, our guide on what a trademark is sets out the badge-of-origin principle that examiners apply.

How long you have to respond

You generally have up to 15 months from the date of the first report to get your application accepted. That is a generous window by international standards, and it gives you room to gather evidence, negotiate a consent, or refine your arguments. Extensions of time are available in many situations if you need longer.

It pays to act early rather than letting the deadline approach. Some responses, particularly evidence of use under section 41 or a negotiated consent under section 44, take time to assemble, and you do not want to be rushing them at month fourteen.

Milestone	Timing
First adverse report issued	Usually 3 to 4 months after filing
Deadline to reach acceptance	Within 15 months of the first report
Extensions of time	Available in many circumstances
If you do nothing	The application lapses at the deadline

What a good response looks like

There is no single right answer. The strongest response depends entirely on the ground raised and your circumstances. In practice it usually involves one or more of these:

• Legal argument that the objection does not apply, citing the Act and decided cases.
• Evidence of use showing your mark has been used and has become distinctive of your business.
• Amending the goods and services to remove the overlap or the misleading connotation.
• Negotiating a consent or coexistence with the owner of a cited earlier mark.
• Dividing the application so the unobjected parts can proceed while you deal with the rest.

The aim is always the same: give the examiner a defensible reason to withdraw the objection so your application can move to acceptance and on toward registration. For the full path from filing to registration, see our guide on the trademark process step by step.

Common questions

Does an objection mean my mark has been refused? No. An adverse report is an objection, not a final refusal. It opens a window for you to respond. A mark is only refused if the objections are not overcome within the time allowed.

Can I respond myself? You can, but the wording of a response matters a great deal, especially for section 41 evidence or a section 44 argument. A well-targeted response is far more likely to succeed, and a weak one can waste part of your 15-month window.

What does it cost to get help? Our review and advice on an adverse report is $150 per trademark. We read the examiner’s reasoning, advise you on the strongest available response, and can then draft and lodge it for you.

What happens if I ignore the report? The worst response is no response. If you do nothing, the application lapses at the deadline and you lose your filing date. You would have to start again, and the landscape on the register may have changed by then.

How we help

Send us your report and we will review the examiner’s reasoning and advise you on the strongest response, then draft and lodge it for you. Our review and advice is $150 per trademark.

If you are weighing up the wider picture, you may also want to read about trademark opposition and non-use, which covers what happens after acceptance, and how long a trademark lasts once it is registered.

Received a report and not sure where to start? Get adverse report assistance, or ask our assistant for a quick, plain-English read of what your objection means.