Substantive Examination

Stage 2: Substantive Examination

The short answer: substantive examination decides two things — whether your mark is distinctive (capable of distinguishing your goods or services from others), and whether it conflicts with earlier marks. If an examiner's notice arrives, you can generally amend or reply in writing within 3 months; if the requirements still are not met, you can ask for a hearing. This is where most applications stall.

Distinctiveness

After the formality stage, the Registry examines whether the application complies with the Trade Marks Ordinance and Rules. The core question is whether the mark can be distinguished from others — in other words, whether it is distinctive.

Common grounds for refusal

• Descriptive: a mark that only describes the goods or services, or indicates quality, purpose, quantity or value — for example "premium" in "premium service" — will be objected to.
• Geographical names: place names are common to the trade and generally lack distinctiveness, so registration is usually refused.
• Generic names, shapes and models: terms or shapes customary in the trade cannot be registered as marks.
• Conflict with earlier marks: identical or similar marks on identical or similar goods or services, where confusion is likely.

After an examiner's notice

If the examination is not passed, the Registry issues a notice explaining why the application does not comply. The applicant may amend within three months.

If it still does not comply after amendment, a further notice states the result; the applicant then has three months from that notice to meet the requirements or request a hearing.

1. Identify the type of objection: a distinctiveness objection (add a device element, narrow the specification, or file evidence of use) or a citation (narrow the goods, obtain consent or a coexistence agreement).
2. Keep evidence of use: if you argue acquired distinctiveness, invoices, advertising and sales data must be assembled early.
3. Protect the 3 months: no response in time and the application may be treated as withdrawn.

Got an examiner's report? We can assess it Next stage: publication