18.3. Rejection of an application for registration

Date Published

A point of 'impasse' may be reached in the course of examining an application when the matter impeding acceptance is a ground for rejection under Part 4 Division 2 of the Act (sections 39 through 44).  Rejection will generally only be considered in relation to these circumstances.

Note:  The rejection process does not affect the right of an applicant to request a hearing at any time during examination.

3.1  When to consider rejection of an application

Generally, the following conditions would prevail before examination of an application could be considered to have reached an impasse:

  • all grounds for rejection have been raised and clearly explained;
  • the applicant has been advised of available options for overcoming the grounds for rejection;
  • all submissions have been fully considered and have been responded to;
  • evidence of use, if provided, has been insufficient to overcome the grounds for rejection; and
  • it does not appear any further progress can be made.

It may sometimes be appropriate to include a serious warning about the possibility of rejection in the initial examination report. Such action should be considered in the following circumstances:

i. When a new application is lodged and examination reveals strong grounds for rejection under section 41 or 44 and no prospects for overcoming the grounds for rejection by a restriction of the goods and/or services.

ii. When a divisional application is lodged for a trade mark and an impasse had previously been reached in the examination of the parent.

iii. When a new application is lodged which is substantially identical to one which has been or is currently subject to a hearing.

Such a warning should convey the following information:

  • although the applicant may make submissions on the correctness of the examiner’s decision, it appears unlikely such submissions will be persuasive.
  • the applicant should consider providing substantial evidence of use or detailing other relevant circumstances if they wish to pursue the application
  • submissions that are not persuasive, do not contain evidence of use or do not detail other relevant circumstances overcoming the ground for rejection may result in a Notice of Intention to Reject being issued.

3.1.2 Rejection at the first report

Reg 4.8 of the Trade Mark Regulations 1995 requires the Registrar to issue an adverse report to the applicant if they reasonably believe that a ground for rejection exists under the Trade Marks Act 1995. The application must then be rejected if the Registrar is satisfied  that a ground for rejection exists.

Generally the Registrar will not be satisfied that a ground for rejection exists without first giving an applicant the opportunity to contest the beliefs set out in the first report. In the majority of cases it will therefore not be appropriate to issue a Notice of Intention to Reject at the first report.

A divisional application may include a Notice of Intention to Reject in the first report where the parent application/s have come to an impasse and this has been communicated to the applicant previously. Examiners should be certain that the impasse communicated previously is applicable to the goods/services remaining in the child application.​​​​​​​

A standard application may include a Notice of Intention to Reject in the first report where there is a substantially identical trade mark application which has been heard or reached an impasse and this has been communicated to the applicant previously. Examiners should be certain that the impasse communicated previously is applicable and it is encouraged that the relevant hearing officer or Quality, Practice and Customers is consulted.
 

Note: Rejection of an application at the first report will only be appropriate in instances where evidence of use after the priority date will not assist the applicant in overcoming the ground for rejection.

3.2  Notification of intention to reject an application

If the examiner is satisfied that the examination process has reached an impasse, the next step is to draft a Notice of Intention to Reject. The notice is in the form of a letter rather than a report.  While any examiner can prepare the notice, it can only be signed and issued by a delegate.  The authority to propose rejection and the delegation to reject an application under s33 is presently exercised by APS6 examiners, EL1 Examination Team Leaders and Deputy Registrars.

The Notice of Intention to Reject will contain:

  • a restatement of the ground(s) for rejection;
  • reasons why submissions to date have not been sufficient to overcome those grounds; and
  • all possible solutions to finalise acceptance of the application, including the options of requesting a hearing or the withdrawal of the application.  

A full review of the examination process will take place and all grounds for rejection will be re-assessed before dispatch of the Notice of Intention to Reject.

3.3  Applicant's response to Notice of Intention to Reject

The applicant is allowed two months from the dispatch date to respond to a Notice of Intention to Reject.

3.3.1

Applicant does not respond

If the applicant does not respond within the time allowed the application is rejected.  A Rejection Notice will then be sent to the applicant with advice than an appeal from the decision to reject lies with the Federal Court or the Federal Circuit Court. The rejection is then published in Australian Trade Mark Search.

The applicant may request a Statement of Reasons once the application is rejected.  If the applicant makes such a request, the examiner will prepare written reasons for the decision to reject the application.

3.3.2

Applicant requests a hearing

If the applicant requests a hearing the case file is taken over by the Opposition and Hearings Section.

3.3.3

Applicant makes further submissions

If the applicant does not request a hearing or does not elect to withdraw the application, but makes a submission in response to the Notice of Intention to Reject AND that submission does not overcome the ground for rejection, the examiner will need to acknowledge and address the submissions and advise that the applicant must request a hearing otherwise rejection will proceed. The applicant should be given at least two weeks from the date of the response to their submissions to request a hearing and pay the relevant fee, even if this period extends beyond the initial deadline to respond to the Notice of Intention to Reject (however, it remains the applicant’s responsibility to ensure the application does not lapse in the intervening period.)

3.3.4

Applicant requests withdrawal

If the applicant chooses to withdraw the application, rejection plays no further part in the finalisation of the application.

3.4  Legislation

Provisions in the Trade Marks Act, 1995 pertaining to the rejection of applications include the following:

para 33(3)(b)If the Registrar is satisfied that there are grounds for rejecting an application then he or she must reject the application.
Section 206A person who has been delegated by a signed instrument of the Registrar may reject a trade mark application.
sub-section 33(4)

The Registrar cannot reject an application without giving an applicant an opportunity to be heard.

paras 204(a),(b)

paras 204 (a),(b)The Registrar is to do an act or thing as soon as practicable in circumstances where the Act requires him or her to do any act or thing and no time period is provided for in the Act;
paras 34(a),(b)The Registrar must notify the applicant of his or her decision to reject an application and publish the decision.
para 35(b)The applicant may appeal to the Federal Court or the Federal Circuit Court against a decision by the Registrar to reject the application.

Amended Reasons

Amended Reason Date Amended

Terminology updated to reflect legislative changes.

Remove references to Decision on the written record (obsolete term).

Update hyperlinks

Update hyperlinks

Update hyperlinks

Additional information provided for rejection at first report and rejection of divisionals.
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