The most common kinds of objections received during the examination of an Australian trade mark application are earlier similar trade marks, or that the trade mark is insufficiently distinctive for registration. There are usually several ways to overcome such objections. However, there are fewer avenues in responding to a distinctiveness objection than there are in seeking to overcome any earlier similar trade marks.

Distinctiveness

A distinctiveness objection can be raised on the basis that the trade mark is “not to any extent inherently adapted to distinguish the designated goods or services”, meaning it is considered essentially directly descriptive of the claimed goods and/or services. Alternatively, this kind of objection can be raised on the basis that the trade mark is “to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services”, meaning that the Examiner has not considered it to be directly descriptive, but that it still remains insufficiently distinctive for the purposes of registration. As outlined in Note 1 to Section 41 of the Trade Marks Act 1995 (Cth) a trade mark will be considered insufficiently inherently adapted to distinguish goods and/or services when the trade mark indicates “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services” or “the time of production of goods or of the rendering of services”.

In circumstances where written arguments or evidence of use and reputation of a trade mark have been unsuccessful in overcoming a distinctiveness objection raised by an Examiner, an applicant can consider requesting an Ex Parte Hearing. This is a particularly helpful approach where it appears that the applicant and Examiner have reached an impasse during examination.

An Ex Parte Hearing affords the applicant an opportunity to present its arguments and any evidence of its use and reputation in a trade mark before a Hearing Officer (a senior member of the Trade Marks Office, acting as a delegate of the Registrar of Trade Marks). Subsequently, the Hearing Officer will issue a written decision setting out their reasoning and the outcome.

Benefits of an Ex Parte Hearing

Although an Ex Parte Hearing is often strategically requested after all efforts with the Examiner have been exhausted, it can be requested earlier than this. There are several advantages in proceeding to an Ex Parte Hearing, particularly an oral Hearing. Such Hearings allow you to engage directly with the decision-maker, including accommodating a nuanced discussion and any queries or concerns to be addressed. The Hearing Officer will consider the matter completely afresh, as opposed to only assessing the Examiner’s position. Additionally, the written decision that you receive will include a detailed analysis of the Hearing Officer’s reasons for their decision, which are not available during examination.

Recent Decision

In the case of Sportsbet Pty Ltd [2025] ATMO 195, the Examiner raised a distinctiveness objection, amongst others, on the basis that the application for trade mark 2543951 (pictured below) was to some extent, but not sufficiently, inherently adapted to distinguish the, broadly speaking, software goods, as well as entertainment, education, gambling, gaming and related services. The matter was eventually taken to an Ex Parte Hearing.

The Hearing Officer agreed with the Examiner’s assessment of the ordinary signification of the trade mark, being “the Goods and Services might be available from more (physical) places, or that betting and gaming services offer more winning places than usual”. However, the Hearing Officer found that, even applying this meaning, it does not have a descriptive relationship with all of the claimed goods and services.

Furthermore, the Hearing Officer found that, in relation to the claimed goods and services, “[t]he phrase MORE PLACES does not describe the Goods and Services or their characteristics in anything more than a broad way altogether lacking specificity” and, therefore, “there is ample scope for honest, fair use of the descriptive words MORE PLACES without danger of impinging on the rights given to the Applicant by registration.” On this basis, the Hearing Officer considered the trade mark to be sufficiently inherently adapted to distinguish the claimed goods and services, withdrawing the distinctiveness objection.

Conclusion

For applicants facing a distinctiveness objection – or other kind – an Ex Parte Hearing may be a beneficial strategy to progress a trade mark application. This is particularly true when other options have already been exhausted.