1. Introduction

Date Published

Once an applicant has received a report from the Registrar raising grounds for rejection under section 44, the application cannot proceed to registration until the grounds for rejection are overcome.  In an attempt to overcome these, the applicant may:   

  • Respond in writing to the report submitting arguments in rebuttal.
  • Provide documents and information as additional support for the application.

  • Amend the specification in order to remove all goods/services that conflict with the earlier trade mark(s).

  • Provide a letter of consent from the proprietor of the conflicting trade mark(s) (other circumstances).

  • Enter into negotiation with the proprietor of the conflicting trade mark(s) with a view to mutual amendment of specifications.

  • Instigate a non-use action against the other party, in an effort to have the conflicting trade mark limited in scope or removed entirely from the Register.

  • Provide evidence of use to support a claim for honest concurrent use, prior use or other circumstances (See Part 28 of this Manual).


Arguments in rebuttal are, of course, decided on by the applicant or their agent.  And similarly, documents and information designed to support the applicant's case, including formal evidence of use, are also in their hands.  However, examiners may suggest options for overcoming the grounds for rejection so the application can proceed to acceptance.  These options are set out in the following paragraphs.  Also included, for completeness, are options which are available to the applicant, but which will not generally be suggested in examination reports.

Note that options for overcoming grounds for rejection in relation to an International Registration Designating Australia (IRDA), including amendments to IRDAs, are covered in Part 60 of this Manual.