23.2. Submissions in rebuttal, amendments and informal information

Grounds for rejection under section 41 are raised if the Registrar is not satisfied that the trade mark is capable of distinguishing the applicant's goods or services from those of other traders in the marketplace.  The onus then moves to the applicant to provide information that will help satisfy the Registrar that it is appropriate for the application to proceed to acceptance and subsequent registration.  The kind of information provided may take different forms and all information supplied should be carefully considered.

2.1  Submissions in rebuttal

The applicant or agent may write to the office rebutting the grounds for rejection.  Arguments are likely to be many and varied, and the amount of weight they can be given will depend entirely on what they are and the strength of the ground for rejection raised. If submissions provide information not available at the time of examination, and this information is sufficient to satisfy the Registrar that the trade mark is capable of distinguishing, the ground for rejection may be withdrawn.

2.2

2.2.1  Amendment of the goods/service specification

If grounds for rejection have been raised in respect of only part of the specification of goods and/or services, the applicant may be able to overcome the problem by deleting that part. For example, if grounds for rejection only apply to class 25 in a multiclass application, deleting that class would enable the ground for rejection to be withdrawn. A proposal to amend the specification to address a section 41 ground for rejection also needs to consider goods and/or services that are similar to those that are described by the trade mark.

2.2.2  Excluding goods and/or services

Exclusions should not be recommended as an option for an applicant to consider.

If an applicant offers to exclude goods and/or services to overcome a section 41 ground for rejection, examiners need to carefully assess whether the proposed amendment overcomes the grounds for rejection, and does not raise additional grounds.

A proposed exclusion to address a section 41 ground for rejection needs to address all possible ways a trade mark is not inherently capable of distinguishing. It may be that the trade mark is problematic in a number of different ways when applied to the goods and/or services claimed. For instance the trade mark may represent not only the subject matter of the goods/or services, but also be a reference to their nature, purpose or function.

When faced with a proposed exclusion, section 43 considerations should also be taken in account.

A proposed exclusion may result in the trade mark, which has a particular connotation, being deceiving or confusing to a significant portion of the relevant market (when applied to the goods and/or services that remain).

For further information please see the Persian Fetta decision (Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367), and Primary Health Care Limited v Commonwealth of Australia [2016] FCA 313.

In very limited circumstances a proposed exclusion may overcome a section 41 ground for rejection, and not result in a section 43 ground for rejection. A proposed exclusion would need to remove the likelihood of other traders needing to use the trade mark in relation to the same goods and/or services, and those of a similar description. In addition, there would need to be a low likelihood that the connotation of the trade mark would confuse or mislead the public, when applied to the remaining goods and/or services.

The circumstances where exclusions can be beneficial are very limited and should be treated with extreme caution.

2.3  Informal information

In cases where the trade mark is only slightly lacking in inherent adaptation to distinguish, the applicant may be able to provide informal information which will satisfy the Registrar. This is most likely to be provided as part of a submission in rebuttal.  For example information showing that the applicant’s industry is highly specialised or that the relevant market is very narrow, or examples of the trade mark in use in brochures or catalogues, will sometimes be enough to show the Registrar that the trade mark has the requisite capacity to distinguish.

2.4  Examiner's own research

Similarly, the examiner's own research may reveal information sufficient to overcome the grounds for rejection.  Access to the Internet now often allows examiners to see how the trade mark is used within the trade.  This kind of information may be enough to satisfy the Registrar that the trade mark is capable of distinguishing, despite the prima facie impression it has made.  However, informal information either received from the applicant or found by the examiner generally will not overcome strong grounds for rejection under section 41 and formal evidence of use will be required.

2.5  Any other circumstances

When assessing trade marks which are to some extent, but not sufficiently, inherently adapted to distinguish, the Act specifies that the Registrar is to consider 'any other circumstances' in combination with the trade mark's inherent adaptation and evidence of use provided by the applicant. The circumstances referred to here may be any information, including the examiner's own research, which serves to satisfy the Registrar that the trade mark is capable of distinguishing.  For example, an overseas registration would not on its own, be sufficient to overcome a ground for rejection, but a number of such registrations in similar jurisdictions would be useful support for a trade mark with limited use in Australia.