23.1. Introduction

Trade marks that are not capable of distinguishing the applicant's goods or services from the goods or services of other persons must be rejected.

Where an examiner considers that a trade mark is not sufficiently inherently adapted to distinguish, they must advise the applicant whether the trade mark falls for consideration under s 41(3) (namely, that the trade mark is not to any extent inherently adapted to distinguish) or s 41(4) (namely, that the trade mark is to some extent, but not sufficiently, inherently adapted to distinguish). The applicant has several options to respond, including:

• filing legal arguments that the examiner’s objection is incorrect or should not apply to all of the goods and/or services
• amending the specification of goods and/or services to remove those in respect of which the objection applies
• providing formal evidence of use of the trade mark
• supplying any relevant information, including about the relevant industry or market that supports legal arguments or gives appropriate context to evidence of use
• advising of any other circumstances that might make it appropriate for the Registrar to accept the trade mark.

Any submission should be provided in an electronic format via Online Services. IP Australia does not routinely accept physical documents or exhibits so clear representations of any relevant evidence should be filed.