Case Studies

For many businesses that choose to self-file their own trade marks with IP Australia, receiving an ‘adverse report’ from an IP Australia trade marks examiner looks like the end of the road for their application. But it doesn’t have to be.

We are specialists in preparing the formal response to the examiner to help you overcome their objections and get your trade mark over the line. Here are several case studies demonstrating how we helped businesses with their examiners’ reports:

This exciting software start-up had chosen a name that was not all that inspiring and self-filed a multi-class trade mark application for a logo that unfortunately appeared to mimic a global social media brand. Not only was the name not memorable, the logo would eventually get them some unwanted attention from a behemoth with plenty of money to shut them down.

Here’s what we did:

1. Reviewed the examiner’s report and advised that a rebrand was essential. To their credit, the start-up directors agreed. They went off and brainstormed and came back with a list of possible new trade marks.

2. Conducted searches of the Australian Trade Marks Register and the United States Patent and Trade Marks (USPTO) database. Unfortunately, their chosen list contained a key word that was well protected and would’ve made any combination very difficult to register. It was also again not the kind of trade mark that creates buzz.

3. Advised on what makes for a more memorable and protectable trade mark, and again, to the directors’ credit, they went off and brainstormed. This time they came back with a handful of potentially highly registrable trade marks.

4. Conducted searches again, and advised which two of three potential new brands would be best to pursue based on the search results. The client chose one.

5. Quoted on filing an express trade mark application so that we would hear back from the Trade Marks Office within 2-5 business days about the chosen trade marks eligibility for acceptance.

6. Filed an ‘express’ trade mark application with their exciting new brand.

The win:

Within THREE business days, we heard back from the examiner that indeed their chosen trade mark was eligible for acceptance!

The director of a chain of fitness gyms had received a complex and concerning examiner’s report. There were three significant issues:

His trade mark was cited against several other previously registered trade marks under section 44 of the Trade Marks Act 1995 (Cth).

The examiner advised that the trade mark was also a term other traders should be able to use under section 41,.

The examiner also stated the icon within the trade mark was ‘contrary to law’ under section 42 because it contained a ‘prohibited symbol’.

That’s a lot to take in.

Understandably the director was angry that his graphic designers had created the logo and had essentially walked him into this huge mess.

Here’s what we did:

1. Reviewed the examiner’s report and provided plain English advice about the serious issues the trade mark application faced but also that simply using the trade mark on signage, the website, marketing materials etc. was unlawful according to cited Commonwealth Act. Also, that his trade mark appeared to be infringing the other registered trade marks, particularly one that was essentially the same (but without the icon) and already protected for gym services.

2. Several recommendations were made in the advice, including rebranding and seeking legal advice from an IP lawyer.

3. A referral was made to a trusted IP lawyer for further advice (we receive no fees for referrals). The director had a free initial consultation and is now considering his next steps, which will most likely involve a re-brand.

   The win:

   Although our advice and the IP lawyer’s consultation raised some serious and unique issues the director must attend to, the win is in being fully aware of the risks.

   NOTE: When using brand identity experts and graphic designers, ensure thorough professional trade mark searches are conducted prior to committing to using your new brand.

This accountancy practice had self-filed their logo, which contained the name of the accountancy firm and its slogan.

The practice had been operating with a version of this logo since the early 1990s but they had never filed a trade mark application until 2017.

The trade mark examiner issued an adverse report stating that the accountant’s name was too similar to two other trade marks registered in the same class, and for similar services.

We reviewed their examination report, asked a handful of questions, and quickly realised the practice had the benefit of extensive ‘prior use’ to the other cited trade marks.

The examiner had also noted some ‘formalities’ with the application, namely the trustee as owner of the trade mark.

Here’s what we did:

1. Reviewed the examiner’s report and provided plain English advice about what the issues are and how to overcome the examiner’s objections. The accountancy practice agreed to our recommendations.

2. An initial letter was sent off to the examiner dealing with the formalities and clarifying the trustee’s details – this was corrected on the record within a few days.

3. A statutory declaration with 26 ‘exhibits’ (evidence of their use of the trade mark) were prepared claiming ‘prior use’ under section 44(4) of the Trade Marks Act 1995 (Cth).

The win:

After uploading the statutory declaration and exhibits, within just FOUR business days the accountancy practice’s trade mark application went from pending for several months to ‘accepted’ status. A great win!