IP Australia Office Actions: Overcoming Refusals in 2026

You generally have 15 months from the first IP Australia examination report to fix every objection, or your application will lapse. In that window, you can argue, amend, and file evidence. If the examiner maintains the refusal, you can request a hearing, then seek review or appeal.

At GTC, we draft and argue these responses every week, and a qualified local attorney files them with IP Australia. The playbook below is the one we use for clients, anchored to IP Australia's own guidance. For the wider picture on filing in Australia, see our Australia country guide.

What is an adverse examination report?

It is a written office action from IP Australia's Trade Marks Office explaining objections to registration and how to address them. Australian practice does not call it an office action, but it does the same job: it lists each objection, cites the section of the Trade Marks Act 1995 (Cth), and explains how to respond.

How long do I have to respond?

Fifteen months from the date of the first examination report to overcome all objections, otherwise the application will lapse. IP Australia can issue further reports inside that window if issues remain. If you need more time, extensions are available for a government fee; check the live IP Australia fee schedule.

What should I do in the first 7 days?

• Calendar the 15-month date and two internal reminders.
• List each objection under its section number, with the cited goods and services next to it.
• Pull examples of how the term is used in the market by third parties, if at all.
• Decide early whether you will rely on evidence of use. If yes, start collecting it now.
• Identify any safe specification cuts that remove the areas causing the conflict.

What are the common refusal grounds, and what do they mean?

IP Australia ties the most frequent grounds to the Trade Marks Act 1995 (Cth):

• Section 41, not capable of distinguishing. The trademark is descriptive or generic for the goods or services.
• Section 43, likely to deceive or cause confusion. Words or images suggest a quality, origin, or link that is untrue.
• Section 44, conflict with an earlier trademark. A cited pending or registered trademark is too close for the same or similar goods or services.
• Section 60, reputation of another trademark. Another trademark's reputation in Australia would cause confusion if yours were registered.
• Section 62A, bad faith. Filing conduct suggests dishonesty or an attempt to trade off someone else.

One report may stack several of these. Your job is to fix each ground with evidence or argument, or both.

What works in a response?

Three levers, often used together, tend to work.

1) Argument

• Distinctiveness: explain why consumers would see the trademark as a badge of origin, not a description. Use dictionary sources, industry usage, and context. Show that the term has a suggestive or allusive meaning, multiple ordinary meanings, or industry nuance, so that consumers must think before connecting it to the goods.
• Deception or confusion: walk through the trademark as a whole, normal and fair use of the words, who buys the goods, and how. The examiner applies imperfect recollection, not a side-by-side lab test.
• Citations: compare sight, sound, and idea, then the goods and services and trade channels. Pinpoint the differences rather than simply asserting there is no confusion.

2) Amendment

• Narrow the specification to the goods you sell. Precise wording can clear s43 or s44. You can narrow or clarify; you cannot broaden or add new scope.
• Add an endorsement or limitation that removes the problematic meaning or scope, consistent with the Trade Marks Office Manual.
• Delete problem classes, or divide the application so unproblematic classes can proceed.
• Representation changes are limited to those that do not substantially affect the identity of the trademark, such as correcting a minor error. You cannot switch to a different sign.
• Correct owner details, or appoint or change your local attorney, if needed.

Before narrowing, we run a quick clearance check to make sure the new wording will not create a fresh s44 issue.

3) Evidence

• Distinctiveness through use (s41): file a declaration with exhibits, covering sales, advertising, media, website analytics, and examples of the sign used as a trademark.
• Market context: if the field uses the term in a non-descriptive way, show it.
• For s44, add a letter of consent from the cited owner, or evidence of honest concurrent use where available under the Act.

How do I structure strong s41 evidence of acquired distinctiveness?

Lead with use as a trademark, not just as text on a page. Show duration, extent, and impact of use in Australia, organized by date and tied to the trademark as filed.

• Declarations: from a senior officer with knowledge of sales and marketing, attaching the records and explaining the context.
• Dated specimens: packaging, labels, point-of-sale, signage, app screens, and screenshots showing the trademark in the exact form as a badge of origin.
• Sales and distribution: units sold and revenue by year, geographic reach within Australia, invoices, distribution agreements, and retailer listings.
• Advertising: spend, channels, reach, and examples of the ads. Keep it tied to Australia.
• Website and app use with Australian user metrics.
• Media and consumer references: independent press, awards, and user reviews naming the trademark as a brand.
• Timing: cover use before filing and continuing use since.

Avoid padding. Five pages of strong documents beat 50 pages of fluff. Link each exhibit to a short argument about what it proves.

What about s44 citations to earlier trademarks?

Start practical, then legal.

• Reality check: if the goods are identical and the trademarks are very close, a consent agreement may be the most direct path. If consent is not obtainable, consider narrowing the specification or dividing the application.
• Arguments: target specific differences, typical purchasers, and how the goods meet different needs or sit in different channels. The more considered the purchase, the lower the confusion risk.
• Marketplace context: if the shared element is common in the trade, show third-party use. That narrows the scope of the cited trademark.
• Statutory pathways: honest concurrent use or other circumstances can support acceptance under s44 when supported by evidence and, where appropriate, consent.

We often see over-argued s44 replies that refuse to narrow goods. That tends to lock in the refusal. Lead with the small, surgical amendment that removes overlap, then argue what is left.

What about a s43 connotation objection?

Tackle the alleged meaning head-on. Show why the ordinary meaning is not deceptive in your context, or restrict the specification so the connotation would not mislead. A s43 objection can catch a trademark that looked clear on search, so address meaning, not just similarity.

Can I get more time if I am still assembling evidence?

Yes. Extension-of-time mechanisms exist, and government fees apply. Use the live IP Australia fee schedule for requirements and current charges.

What if the examiner maintains the objections?

You can request a hearing before a delegate of the Registrar. Hearings can be on the papers or oral; you file written submissions and annex your evidence. A decision after hearing can be reviewed or appealed under the Trade Marks Act, including to the Federal Court.

What happens after objections are overcome?

The application moves toward acceptance, advertisement, potential opposition, and then registration. Opposition is a separate process: after advertisement, any third party can oppose (the government fee for a notice of intention to oppose is AUD 250), and if your application is opposed you must file a notice of intention to defend within two months of receiving the opponent's statement of grounds and particulars to keep the application alive.

What does a response cost?

IP Australia charges no fee for filing a written response to an examination report; fees apply only for extensions of time, hearings, and any refiling (a new application is AUD 250 per class using the picklist). The main cost is the professional fee, which covers the attorney time to build the argument and evidence. Our office action response service handles the full response in Australia at a fixed price; the current figure is on our pricing page.

An Example From Our Files

An Australian food startup filed a trademark that read like a product descriptor for Class 30 foods. The examiner raised s41 and s44.

What we did

• Split the filing: divided out Class 30 from Class 35 retail so the retail services could proceed.
• Amended the Class 30 specification to the client's niche products.
• Filed a director's declaration with five years of dated packaging, supermarket planograms, sales by state, and national ad placements.
• For s44, secured a letter of consent from a regional brand after a short coexistence agreement limited to different sub-categories.

Outcome

• Class 35 accepted on the next action.
• Class 30 accepted after a hearing on the papers where the delegate credited the endorsement and the geographic sales spread. Registration followed after advertisement.

Common Pitfalls We See, and How to Avoid Them

• Treating Australian practice like United States practice. The legal grounds are s41, s43, and s44, not United States provisions, and the evidence needs to be Australian.
• Ignoring the connotation point. Address meaning under s43, not just similarity under s44.
• Filing mountains of weak evidence. Curate and connect each exhibit to a claim about distinctiveness or market conditions.
• Overbroad specifications. They invite s41 and s44 problems. Cut to what you sell and where you sell it.
• Missing the deadline. The application lapses if objections are not resolved in time.

How We Can Help

GTC is an attorney-led firm that handles trademark prosecution in Australia and coordinates global portfolios. Our experienced attorneys draft your response, and a qualified local attorney files it, handles examiner calls, and, if needed, runs the hearing.

• Need a response now? See our office action response service.
• Starting from scratch or refiling? Our Australia trademark filing service gets you on the right footing from day one.
• If your refusal is about similarity, read our explainer on Likelihood of Confusion: The #1 Reason Trademarks Get Refused.
• For search strategy before you narrow or refile, see Trademark Searches: Beyond Google: Comprehensive Tools and Best Practices.

Related reading:

• How to Register a Trademark in Australia: Complete 2026 Guide
• Descriptive vs Suggestive Marks: Understanding Trademark Strength