Advanced trade marks: Section 44 evidence of use

When applying for a trade mark, you might need to provide evidence during your application. Learn what this means and what you need to know.  

What is Section 44?

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 could be for a number of reasons including 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'll 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're 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.

Advanced trade marks section 44 evidence

Want to learn more?

Got a burning question? Here's the answers to our most frequently asked questions.

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.

Providing evidence of use

 

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've 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
    • Advertising expenditure
  • 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'll need to provide evidence about each of the individual goods and/or services that you've claimed.

My evidence is confidential. Will this be available to the public?

Check out Part 61 of the  trade mark examiner’s manual to review information the registrar of trade marks will accept in confidence.

Trade marks manual

Related content

Trade marks Apply

Advanced trade marks: Section 41 evidence of use

15 September 2022

When applying for a trade mark, you might need to provide evidence during your application. Learn what this means and what you need to know.  

Trade marks Apply

Providing evidence of use

Here's how to respond to an adverse examination report with evidence of use.

Trade marks Apply

How to respond to an examination report

Here's how to respond if you receive an examination report.