Applying for a trade mark is a great step in ensuring your brand is protected. However, in some circumstances you might need to provide evidence of use during your application. This might be for problems with a trade mark under Section 44, meaning the applied-for trade mark is considered too similar to at least one other registered trade mark.
In this webinar you will learn:
- When to provide evidence
- What the evidence needs to show
- What kind of evidence to provide
Our presenters: Laura and Steve both work as trade mark examiners at IP Australia. When you submit a trade mark application to IP Australia, trade mark examiners are the people who look at your application and consider whether it meets the requirements for registration under the Trade Marks Act. They are also responsible for looking at any evidence you might submit in support of your application, which is what they’ll be talking about in this webinar.
Please note this webinar is not an introductory session and assumes you have already viewed the Understanding Trade Marks webinar (available in our webinars playlist on YouTube).
FAQs
- Are there any guidelines on the standards required to successfully show evidence of use?
Each trade mark application involves its own unique considerations, so the standard required is different depending on the circumstances of your particular case. It will depend on factors such as the similarity between the marks, the similarity between the goods/services, the industry they operate in, where the trade marks are being used, whether confusion has actually occurred, etc. More information is available here.
- How can social media be used to demonstrate evidence of use?
Use of your trade mark on social media will be considered in the same way as the use of your trade mark across other platforms, physical or virtual. If you can show that you have used or promoted your trade mark on social media, this will be evidence that can count towards establishing prior continuous use, or honest concurrent use. Social media may be especially useful in showing that consumers are aware of your trade mark, through reviews or comments.
- My business is online only, what evidence of use can I provide?
If your business is online only, you should still be able to provide much of the same evidence as if your business was not web-based. Examples of evidence that you might provide include information about your sales, income and advertising expenditure, and screen captures of your trade mark being promoted, mentioned on third-party websites, or used on or connected with the goods or services being offered.
- My trade mark application is for multiple classes, do I need to providence evidence for each?
Yes, you will need to provide evidence about each of the individual goods and/or services that you have claimed.
- My evidence is confidential, will this be available to the public?
Please see https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/trade-marks-examination-process/publication-your-details. For further information, please refer to Part 61 of the Trade Mark Examiner’s Manual at http://manuals.ipaustralia.gov.au/trademarks/trade_marks_examiners_manual.htm.