The Grounds
The notice identifies the particular registration requirements that the Registrar considers have not been satisfied.
01EXAMINATION
Received a Provisional Refusal?
A notice has been issued in relation to your application. Understand the issues raised, the available procedures and what may follow.
Understanding the Provisional Refusal Notice
A Provisional Refusal means the Registrar has identified one or more issues that prevent the application from being accepted at that stage. It is not a final refusal, and the applicant is given an opportunity to respond within the prescribed period.
The Response Period
The notice specifies the period within which the applicant must respond. Any request for additional time should be made before that period expires.
The Next Step
Consider whether the objection can be addressed by explanation, supporting evidence, amendment where permitted, or a hearing.
What Issues Has the Registrar Identified?
The appropriate response depends on the particular registration requirement that the Registrar considers has not been satisfied.
Distinctiveness
The Registrar may consider that the trademark is not sufficiently distinctive to identify goods or services as originating from one business.
Descriptive or Common Wording
The trademark may consist mainly of wording that describes the goods or services or that other businesses may reasonably need to use.
Earlier Trademarks
An earlier registered or pending trademark may be considered too similar in relation to identical, similar or commercially related goods or services.
Prohibited or Restricted Matter
The trademark may contain elements that cannot be registered or require consent or permission before registration can proceed.
Planning Your Response
The response strategy should be determined only after considering the objection, the available facts and the commercial objective together.
Assess the Available Arguments
Consider the legal position, the wording of the specification and any relevant factual explanation.
Consider the Commercial Objective
Review whether the application, its scope and filing strategy still support the protection intended.
Address the Actual Ground
Identify the specific issue raised and what the Registrar must be persuaded to reconsider.
Review Supporting Material
Determine whether evidence, documents or other material would genuinely strengthen the response.
Available Response Routes
The appropriate route depends on the issues raised, the available arguments and the most effective way to present the case.
Ex Parte Hearing
Address the objection before the Registrar through the prescribed procedure and with the required fee.
Response Deadline
A request for written submissions or an ex parte hearing generally must be made within two months from the objection letter.
Written Submissions
Explain why the objection should be reconsidered, supported where appropriate by legal authorities, evidence or permitted amendments.
Extension of Time
An extension may be requested for a permitted period of up to six months. Approval is not automatic.
What Happens if the Objection Is Maintained?
If the Registrar remains unsatisfied, the objection may be maintained and the application refused. Further procedural options may still be available.
Request the Written Grounds
For a maintained total refusal, the request generally must be filed within two months from the refusal notice. No extension is available.
Consider an Appeal
An appeal to the High Court generally must be filed within one month from the written grounds of decision.
SPEAK WITH A CONSULTANT
Need help planning your response?
We can review the Registrar’s objections, relevant trademark records and available response routes before you decide how to proceed.
Discuss Your Refusal