Fixed fees, published · same business day reply
Urgent — in court this week, or just served? Call 1300 992 219
Home › Guides › You received an adverse examination report
Trade marks & IP4 min read

You received an adverse examination report

An adverse report is not a refusal.

What this is

General information about the law in New South Wales. It is not legal advice, it does not take account of your circumstances, and no solicitor–client relationship arises from reading it.

An adverse report is not a refusal

An adverse report is routine. It is an examiner's preliminary view, not a refusal. You have 15 months from the date of the report to overcome it, extendable, so there is time to do this properly.

Read which ground is raised

Section 41 says the mark is too descriptive to distinguish. Section 44 says there is a conflicting earlier mark.

The routes around a s 44 citation

  • Argue the marks or the goods are not similar. Submissions on the visual, aural and conceptual differences, and on the trade channels. This is the cheapest route, and it often succeeds where the cited mark is weak.
  • Honest concurrent use: s 44(3)(a). Evidence that you adopted and used the mark honestly, without knowledge of the cited mark, alongside it. The Registrar weighs the honesty of adoption, the extent of use, the degree of confusion, and any instances of actual confusion.
  • Prior continuous use: s 44(4). Where you used the mark continuously from a date before the priority date of the cited mark. This is the strongest route because it is a right, not a discretion.
  • Other circumstances: s 44(3)(b). A residual discretion, and the usual vehicle for a consent or coexistence agreement with the owner of the cited mark.
The evidence that carries an applicationDated invoices, dated advertising, sales figures by year, and a declaration from the person who adopted the mark explaining how and when. Assertions of use without documents fail.

Amending instead

Narrowing the specification to exclude the goods where the conflict arises will sometimes remove the citation entirely, and is often faster and cheaper than an evidentiary route. That only works if the excluded goods are not the ones you sell.

Current as at September 2026. Check anything here against your own documents and dates before you act on it.

Related

Need this dealt with?

Trade marks & IP — what we do, and what it costs.

See Trade marks & IP

Ask the solicitor about this

If your own facts do not match the guide, write them down. Twenty minutes on the phone is at no charge, and if the answer is that you do not need a solicitor, that is what you will hear.

A mobile or an email — whichever you would rather we used.

Replied to the same business day. Sending this does not create a solicitor–client relationship — we act after a conflict check and a written engagement. If it is urgent, call 1300 992 219.

No charge

What's happened?

Describe it in your own words.

Email me this guide

As a PDF. One click unsubscribes you.

Call now — 1300 992 219
WeDo Legal assistantType anything · not legal advice
Type in your own words. fees opens the published list · send it reaches the solicitor.
General information only. Not legal advice, and no solicitor–client relationship arises until an engagement is confirmed in writing and a conflict check is completed.