Trademark Objections
Trademarks Online
Trademark Objections
What they are and what to do next
If the Trademark Office has concerns about whether your trademark can be registered, it may raise an objection.
This means the trademark examiner wants you to address a specific issue before your application can move forward, for example by submitting written arguments or providing extra information. If the examiner is satisfied with your response, your application can then be approved for registration.
Below is a simple guide to some of the most common trademark objections, and what you may be able to do if one is raised.
1. Products and services issues
The Trademark Office may raise an objection if the products or services listed in your application are not acceptable.
If you apply through Trademarks Online, this type of issue is almost never raised. Our automated search and select system helps you choose the right products and services from our database of pre-approved terms by the Trademark Office. We guarantee that your chosen products and services description will comply with Trademark Office requirements – if a products or services issue is raised, we’ll deal with it at no cost to you.
2. Earlier trademark applications or registrations (citations)
If someone else has already registered, or applied to register, the same trademark as yours — or one that is very similar — the Trademark Office may raise a citation.
For example, if you apply for WHEAT-BICS for breakfast cereal, your application is likely to run into issues because of the existing WEET-BIX trademarks covering similar products.
If you want to check whether a similar trademark already exists before you apply, you can search the trademark register:
- You can search the Australian online trademark database here.
- You can contact a trademark lawyer for help interpreting the results.
- Alternatively, you can apply for your trademark and wait to see whether an objection is raised.
What can you do?
Depending on the situation, your options may include:
- Submitting a letter explaining why the two trademarks are not confusing.
- Getting a letter of consent from the owner of the cited trademark.
- Removing some of the products or services in your application.
What are your chances of overcoming this objection?
Trademark decisions are made case by case, and the outcome will depend on things like:
- How many citations have been raised.
- How similar the trademarks are.
- How closely related the products or services are.
3. Distinctiveness or descriptiveness objections
If your trademark describes the products or services you want to register, or includes a word or image that other traders in your industry should be free to use, the Trademark Office may object.
Examples of descriptive trademarks include:
- FRESH for fruit juices
- CRISPY for chips
- SOFT for clothing
- FINANCIAL ADVICE for investment services
Examples of trademarks that may be considered non-distinctive include:
- PRIME
- SUPER
- BEST BUY
- A cross for medical services
What can you do?
You may be able to:
- Submit arguments explaining why your trademark is not descriptive, or why other traders would not need to use it.
- Remove some of the products or services from your application.
4. Real names
If your trademark includes a person’s name or image, the Trademark Office may require confirmation that the person has consented to their name or image being used in the trademark.
What can you do?
- If the person is alive: provide a letter of consent from them.
- If the name is invented: write to the Trademark Office explaining that the name is made up.
- If the person has been dead for less than 10 years: provide a letter of consent from the person’s legal representative or estate.
- If the person has been dead for more than 10 years: provide a letter explaining that the person has been deceased for more than 10 years.
