How to respond to an examination report

Here's how to respond if you receive an examination report. 

At a glance

  • An examination report highlights issues with your application
  • There are many ways to overcome these issues
  • You have 15 months to respond
  • Respond to your report via online services

What is an examination report?

An examination report identifies issues with your trade mark application. The examiner’s findings are detailed in the report with options for overcoming them.

What are common issues?

Your examiner may identify:

  • Your trade mark isn't distinctive enough
  • Your trade mark is too similar to other trade marks that share the same or similar goods and/or services
  • Ownership issues – the party identified as the owner cannot legally own trade marks, or ownership is unclear
  • Issues with classes of goods and services – you've picked the wrong classes, or the classes are too broad.

What to do if you receive an adverse examination report

  1. Read the report carefully as it will detail the issues and outline how you may be able to overcome them
  2. If you're confused, contact the person who examined your application. Their details are on the report.

How to overcome issues in your report

How you respond will depend on the issues highlighted in your report. There are several ways to respond:

You can make minor amendments to your application. These include:

  • Ownership details
  • Remove or reduce the number of goods and services
  • Add or change endorsements
  • Amend your representation.

Amend your application

You can’t do the following:

  • Make significant changes to your representation
  • Add goods or services outside the scope of your original claims. For example, if you originally claimed 'shoes' in class 25, you won't be able to subsequently add 'hats', even though they're in the same class.

You can show us how your trade mark has already been used and promoted. You can provide evidence yourself, or you can engage an attorney.

How to provide evidence of use

 You can request deferment if conflicting trade marks have been raised against your application, and:

  • The conflicting trade marks are pending applications, or
  • You're seeking removal for non-use on the conflicting trade mark registrations, or
  • You're seeking to establish honest concurrent or prior use, or other circumstances (such as obtaining a letter of consent), or
  • The conflicting trade mark registration has a status of ‘expired - renewal possible’, or
  • The conflicting trade mark applications or registrations have court action pending.

There's no fee to request a deferment. Successful deferment is subject to the registrar’s discretion.

Defer my application

When can I request a deferment?

You can request deferment once a first report has been issued, however, you must apply before your trade mark application lapses.

How long will it be deferred for?

This depends if deferment was granted because:

  • A conflicting trade mark is either pending or has the status ‘expired - renewal possible’. The deferment will end when the status of that trade mark changes
  • You're establishing honest concurrent use or other circumstances. The application will be deferred for six months
  • You can apply to defer for a second time, but only if you have a new and different reason.

End of deferment

Once your deferment period ends, you’ll receive a letter with your new acceptance date.

If you're running out of time and the acceptance due date is near, you can request more time to respond to the report.

If your trade mark application has already lapsed prior to acceptance, you'll need to request an extension. This extension must be approved before a deferment request can be processed.

Depending on the stage of your application, there are two types of extensions available:

1. Up to six months

Cost: $100 per month.

Great for:

  • Applications that require extra time to work on.

Key things to know

  • Up to six months' extension
  • Can be requested in the first six months after your first acceptance due date
  • Doesn't require advertisement in the Australian Trade Mark Journal.

2. As many months as you need (Section 224)

Cost: $100 per month

Great for:

  • Applications that have lapsed or missed the acceptance due date
  • Applications that have already used the full six-month extension.

Key things to know:

  • You can choose how many months as you need
  • Extensions longer than three months must be advertised in the Australian Trade Marks Journal
  • Requires a declaration with a valid reason as to why an extension is needed.
Request an extension

To address issues in your application, you can divide it into two:

  1. Application one (parent) — includes undisputed parts of your application
  2. Application two (child) — includes any issues that need to be overcome.

This splits off the problematic parts of your application (e.g. disputed classes of goods or services) allowing them to be dealt with separately — meaning you can progress part of your application with the same filing date.

Key things to know

  • Only available for national trade mark applications
  • Your parent application must still be pending when you file the divisional application
  • If the parent application lapses, we can’t change the classes
  • The child application has the same priority date as your parent application
  • You don’t need to change the classes in the parent application when you file a divisional
  • The registrar will change the statement of classes of the parent application after receiving the divisional application
  • You can divide your divisional application further.
Divide your application

If you haven’t been able to address the issues in your application and still believe it should be accepted, you can appeal the decision. This will attract a fee.

You can submit oral or written evidence, or both, to our hearing officers.

The hearing officer will then decide the outcome.

Request an appeal