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

This webinar is hosted by Steven and Laura.

Steven:
Hi everyone, my name is Steven.

Laura:
And I’m Laura.

Steven:
And we’ll be your hosts for today's session. Thank you for joining us.

Laura:
So Steven and I both work as trade mark examiners at IP Australia. When you submit a trade mark application to IP Australia, we're the people that look at your application and consider whether it meets the requirements for registration under the Trade Marks Act. We're also responsible for looking at any evidence you might submit in support of your application, which is what we’ll be talking about today.

Steven:
So the focus of our webinar is trade marks.

Laura:
Trade marks are the signs that you use to differentiate your products from those of your competitors.

Steven:
The specific focus of this webinar is providing evidence to overcome an issue with your trade mark application. Specifically, an issue that has been raised under Section 44 of the Trade Marks Act.

If you have already submitted your application and received an adverse report that mentions section 44, this is the webinar for you.

Laura:
Today’s webinar is not an introductory session. The advanced content we discuss assumes that you have already attended our Understanding Trade Marks or Trade Marks 101 webinars, or that you otherwise have a good base understanding of trade mark law in Australia.

If you haven’t yet participated in one of our introductory webinars, you don’t necessarily need to leave this session, but it might be helpful to go back and review that webinar after we finish up today.

Steven:
Before we jump into today’s content, let’s have a quick refresher about the trade mark basics. A trade mark is a sign that is used to distinguish the goods or services of one trader from the goods or services of another trader.

Most commonly, a trade mark consists of a business name or logo or a combination of the two. But, a trade mark can also take many other forms, as listed up on the screen.

Laura:
Once a trade mark is registered, the registration lasts ten years and can be renewed indefinitely, but sometimes that path to registration does come with a few hurdles.

Today we’ll be looking at some of the ways to help your trade mark overcome those hurdles and proceed to registration.

Steven:
Specifically, we’ll be looking at when to provide evidence, what the evidence needs to show, and what kind of evidence to provide.

Laura:
There are a few different occasions where it’s appropriate to provide evidence of use to IP Australia. The occasion we'll be focusing on today is providing evidence to overcome an issue that the examiner has identified with your application.

The evidence is submitted after you receive your adverse report, as part of the examination process. You will know if this applies to you, because in the report you have received from your examiner, they will have mentioned Section 44 and will have stated that providing evidence of use is an option to overcome the issue that they have raised. In some cases, it may be your only option to overcome a Section 44 issue.

Steven:
All trade mark applications are examined under the Trade Marks Act. Within this Act, there are a number of sections that an examiner considers to determine whether your mark is able to be registered. The section we’ll be focusing on today is Section 44. Section 44 looks at whether your trade mark is too similar to a trade mark that has already been applied for or registered.

Laura:
If you receive a report that raises an issue under Section 44, it means that the examiner has decided that your trade mark is too similar to a trade mark that someone else has already registered or applied for. And, that the goods or services you have claimed are too similar to the goods or services that the owner of the earlier trade mark has claimed. There may only be one other trade mark that is similar, or several.

Steven:
The main concern is that consumers will be confused between your trade mark and the earlier trade mark if they are both being used on similar goods or services.

If two trade marks are similar, but they claim very different goods or services, then they can both be registered.

Laura:
By supplying evidence to overcome the issue, you are trying to show that your mark should also be allowed to be registered, even though someone else already has rights in a similar mark. These are the three categories of evidence that can be used to overcome an issue with Section 44. We will go through each of these in more detail over the next few slides but will first quickly run through the list.

Steven:
For prior continuous use evidence, you will need to show that you have been using your trade mark since before the earlier trade mark was applied for, and continuously since then.

For honest concurrent use evidence, you will need to show that you came up with your trade mark honestly and that you have been using your trade mark for a very long time concurrently alongside the earlier trade mark. You'll be aiming to demonstrate that the Australian buying public will not be inconvenienced by there being two similar trade marks operating in the same industry.

You may also be able to provide information about other circumstances that would enable the examiner to accept your trade mark. This most often takes the form of consent, where you have received permission from the owner of the earlier trade mark to have your mark registered as well.

Laura:
As we mentioned earlier, to establish prior continuous use, you will need to show the examiner that you have been using your trade mark since before the earlier trade mark was applied for.

To find out the date that the earlier trade mark was applied for, you can refer to the earlier trade mark details, which will be attached to the end of your report.
The date you are looking for is called the Priority Date.

If you first used your trade mark before that date, and you have used it continuously since then, you might be able to provide evidence of prior continuous use. In order for your application to be accepted, your evidence will need to show the examiner all of the things that are listed up on the screen.
We’ll step through these one by one.

Steven:
Firstly, to prove prior use, your declaration must include the year, and preferably month, that the trade mark was first used in Australia to sell your goods or services. You should outline when you first started using the mark and let the examiner know of any relevant information if the date of first use is different for different goods and services.

For example, you might have started using your trade mark on t-shirts initially, but after enjoying some success, expanded to a full range of clothing and bags the following year. All of this information is relevant. You should not only state the date of first use, but show evidence such as website screenshots or dated printed materials such as magazines.

Laura:
The next thing the examiner will be looking for is whether the trade mark was used continuously to sell your goods or services, from this date of first use up until the date that you applied for your trade mark.

Your use must be continuous throughout this time in order for prior continuous use to be established. This doesn’t mean that you need to show an example of every single time that you’ve used the mark.

For example, if you have been using the mark for more than a decade, you might consider providing documentation, such as annual sales figures, and showing one dated example of use for each year that you have been operating.

Steven:
The examiner will also be looking to see the goods or services that you sell using the trade mark, and how this may have changed over time. In the adverse report you will have received, the examiner might say that some of your goods and services are similar to those of the earlier trade mark, or that all of your goods and services are similar.

You should look at which of your goods or services are similar to the ones that the earlier trade mark has claimed, and provide evidence about how you use your trade mark on those goods or services.

Laura:
Finally, the examiner will be looking at how the trade mark is used. The examiner will need to be satisfied that the trade mark you have applied for is actually used as a trade mark in the course of trade in Australia.

You might find you have already satisfied this requirement by showing your evidence of continuous use, but if not, it is a good idea to provide examples of how the trade mark is actually used. You can show this by supplying pictures of your packaging, pictures of the trade mark actually appearing on the goods themselves, or copies of your advertising materials.

Steven:
If you are able to establish evidence of prior use, the examiner will be able to accept your trade mark for registration. This means that both your trade mark and the earlier trade mark that was preventing acceptance of your mark will both coexist on the Australian trade mark register.

Laura:
If you're only able to establish evidence of prior continuous use in relation to some of the goods or services you have claimed, the examiner might offer you the option to remove the remaining goods or services and allow you to have registration on the goods or services that you have established prior use in relation to.

Steven:
So next up is evidence of honest concurrent use. This might be an option for you if you have been using your trade mark for a very long time, but not as long as the earlier trade mark.

It is worth noting that it’s incredibly difficult to establish honest concurrent use if you have been using the trade mark for just a few years. This is because the examiner bases their assessment on how the Australian public would be affected if they were exposed to two similar trade marks within the marketplace. Part of this involves looking at what has happened so far.

If you haven’t been using your mark for very long, it’s unlikely that consumers will have been exposed to both marks in the marketplace, so the effects of being exposed to the two similar marks will be unclear. To determine whether they can accept your trade mark under honest concurrent use, the examiner will be looking at five key criteria.

Laura:
First, they will be looking at how similar the marks are to determine the degree of likely confusion. They will closely compare your trade mark with the earlier trade mark, as well as the goods or services that are being sold using the trade marks, to assess how similar the marks are overall. They will also look at where the trade marks are being used within Australia. If the Australian public were exposed to similar trade marks being used in the same area, it’s likely that they would be confused about who owns which trade mark.

The examiner needs to consider the effect that registering both marks would have on the Australian public and avoid inconveniencing them. So, the more similar the trade marks, the more unlikely it is that the marks will be allowed to coexist, especially if they're being used in the same part of Australia.

Steven:
Secondly, the examiner will be looking at whether anyone has actually been confused between the two trade marks. They will determine this through their own research as well as through the statements you make in your evidence.
If you are not aware of any confusion that has occurred, you should let the examiner know.

If however, you are aware of confusion, this won’t necessarily be fatal to your application, but it is something that the examiner needs to be informed about, to consider in their overall assessment. If confusion has actually occurred, your evidence in relation to the other four criteria will need to be very strong.

Laura:
Next up, the examiner will consider whether the use has been honest. The examiner will base this off the information that you include in your evidence about when and why you chose your trade mark.

If you weren’t aware of the earlier trade mark when you chose your trade mark, you should include this in your declaration. If you did know about the earlier trade mark, you should explain why you decided to choose and use your trade mark, even though you were aware that an earlier, similar one existed.

Steven:
The examiner will also consider how long you have used the trade mark, how widely you have used it, and how much you have used it. I’m sure it goes without saying that the more you have used your mark, the more likely it is that your mark will be able to be registered.

Finally, the examiner will weigh up the relative inconvenience that would be caused if they allowed both marks to be registered alongside each other. They will consider both the inconvenience to the owner of the earlier trade mark, as well as the inconvenience to you as the applicant.

Laura:
Following on from the previous slide, this slide lists the kind of information that you should aim to include when providing evidence of honest concurrent use.

Steven:
To prove honest concurrent use, your declaration should include a brief history of the trade mark, with further details about when the mark was chosen and why you chose it. You should also give information regarding whether you knew about the earlier trade mark when you chose your trade mark.

What the examiner is looking for here is that you came up with your trade mark honestly and in good faith. The more details you can give about why you chose the trade mark that you did, the better, as it gives the examiner a better idea about whether the trade mark was chosen honestly.

Laura:
You should also include information about whether you know of any confusion that has occurred between the trade marks. For example, if a member of the public has contacted you mistakenly as they thought you were part of the company who owns the earlier trade mark.

Steven:
Like prior use, you should provide the examiner with information about when the trade mark was first used in Australia, whether it has been used continuously since then, and the specific goods or services that you sell using the trade mark. It can also be helpful to provide information about the specific locations in Australia that the trade mark has been used.

As always, the information that you provide should be accompanied by examples of how the trade mark has been used to sell your goods or services. Things like copies of advertising or packaging material, photographs of signage showing the trade mark, or images showing use of the trade mark on the goods or services themselves will all be helpful.

Laura:
You should also aim to include information about your annual income or turnover figures and information about the amount of money that has been spent annually on advertising and promoting the trade mark.

Honest concurrent use can be quite difficult to prove, so if this is something you’re considering, you may wish to engage the services of a trade mark attorney to help you out.

Steven:
So now we’ll move on to other circumstances. You may be able to provide information about other circumstances that would enable the examiner to accept your trade mark.

Laura:
For example, you might be a subsidiary of the owner of the earlier trade mark, or a related company that has been given permission to register the mark.

Steven:
If you don’t currently have a relationship with the owner of the earlier trade mark, you could consider contacting the owner to negotiate and come to an agreement together.

If the owner of the earlier trade mark is happy for you to register your trade mark as well, even though their mark is currently preventing you from doing so, they can provide you with what is called a letter of consent. This is a letter from the owner of the earlier trade mark that gives their consent for you to register your trade mark. If such a letter is provided to IP Australia, we consider that this is sufficient to withdraw the issue.

Laura:
Choosing this option can come with risks. By contacting the earlier owner, you will be notifying them about your application and making them aware that you're using a trade mark that is similar to theirs.

While they may grant consent, there is also the danger that they might instead feel that your trade mark use infringes upon their established intellectual property rights and they may take steps to protect their rights in the marketplace.

Steven:
Putting together evidence can take quite a bit of time, effort, and money, and there’s no guarantee that it will actually overcome the issue.

You are in the best place to know what’s best for your business, but if you’ve found yourself wondering whether it’s worth it to try submitting evidence for your application, there are a few things you can think about to help you decide. Spend some time thinking about how long you’ve been using the trade mark and how much you have invested into the brand.

Laura:
If you've spent a lot of money getting the trade mark off the ground, have built up goodwill using the trade mark, and many people know that it identifies your goods or services, you might wish to continue pursuing the application and providing evidence.

If your trade mark is accepted under evidence, then your trade mark may become registered, but the earlier similar trade mark will also still be registered.

Steven:
You should therefore consider whether you want to continue investing in a brand that consumers might get confused with another brand that already exists.

Laura:
Consider how you would feel if someone assumed your goods or services came from the owner of the earlier trade mark, and how this might affect your reputation.

For example, if the goods sold using the other trade mark were inferior to yours, would you want potential customers thinking that your goods were of the same low quality? Surely not, so you may want to take this opportunity to create a new trade mark that really helps you stand out from your competitors.

Steven:
If you are thinking that changing your brand might be the best option for you, you might like to try using our TM Assist tool. This tool can help you search the register for other trade marks so that you can be sure that someone isn’t already using your new name or something similar.

Laura:
When you’re ready to apply, consider using our quick turnaround Headstart service. Through this service, an examiner will assess your trade mark and advise you of any issues within five business days. Then, you can decide whether to make your application official, depending on the outcome of the assessment.

Steven:
Of course, if you have invested a significant amount of time and money in a brand and you really want to protect it and continue to use it in the marketplace, then it may be worth providing evidence of use. 

Putting together evidence can be quite difficult, and ensuring it is substantial and persuasive enough to overcome the issue is even harder. It is certainly possible to put together evidence yourself, but if you’re finding it a bit overwhelming, you might consider hiring a trade mark attorney to represent you.
These are professionals with experience in compiling evidence and ensuring it is presented in the right format.

They may also be able to advise you on the likelihood of success of your application. If you think hiring an attorney might be the right choice for your business, you can find one online via the Trans-Tasman IP Attorney Board directory or by using an Internet search engine such as Google.

Laura:
You can also speak to the examiner who examined your application, if you haven’t already. Their name and number will be listed on the report that you were sent. They won’t be able to give you advice about what you should do, but they will be able to give you information, or talk you through the requirements if you do choose to put together evidence.

Steven:
Once you have made the decision to provide evidence, you should start to gather your materials and consider how you will present them to the office.
It is a requirement that evidence is provided in a declaration. A copy of the declaration form will be provided alongside the slides from today’s webinar. Otherwise, it is available on our website at any time.

Laura:
Ideally, your evidence will be provided in a logical order and will be tailored to address the specific issue that has been raised with your trade mark.

It is very important to supplement the statements in your declaration with illustrative examples that demonstrate each aspect of use that you have chosen to highlight. Ultimately, the declaration should provide detailed and targeted information showing that your trade mark should be allowed to coexist with the earlier trade mark.

Steven:
And that’s everything we had prepared for you today. We hope this has been helpful for you in gaining a clearer sense of what your next steps might be. If you do find yourself wanting some extra information, please don’t hesitate to send us an email, or call the examiner whose name and number will be listed on your report.

Laura:
We've now come to the time for a few questions.

Steven:
So the first question that's come through is: "You refer to advertising expenditure as being a key element. But do you take into account things like page views, Instagram posts etc, where promotion of a brand can be far more effectively done using minimal expenditure if the trade mark owner has a powerful and broad reach through social media and other online channels?"

Laura:
Absolutely. We definitely appreciate that you don't have to spend a lot of money to have a really broad advertising reach. It's just one of the key elements that we do look at, so if you do quite a lot of advertising but it hasn't come at a great expense, that won't necessarily disadvantage you.

You do want to provide examples of that broad reach, so give us that information about the page views, the posts, and the interaction and reach that you do have, and all those things can be taken into account. It isn't necessarily all about the money, but if you are going to rely on the examples themselves rather than the amount of money that they cost, just make sure to give us detailed examples of those.

Steven:
OK so our next question. "One thing I have found in preparing these declaration submissions is that often good evidence is itself not dated, but there is corroborating evidence that is, such as an email with the graphic designer, or signwriter or web designer etc."

Laura:
So you're right, good evidence often isn't dated. It's rare that we kind of keep note of the date of things in anticipation of facing issues like this.
So often what we would do is take it at face value, so if you state in your declaration that you've signed, that something was used on a particular date, we will trust that information at face value but having corroborating evidence such as emails that prove it, really just means that there's absolutely no doubt in the mind of the examiner.

So if you can provide that additional information, it's certainly going to help your case. So feel free to send things through where there is no proof of the exact date that it was used, because when you're making statements in your declaration we do believe those unless there's some reason to doubt them.
So even if something's not dated, send it through, and the examiner will consider it.

If they do have an issue about the date it was used, they'll let you know and you'll have the opportunity to provide further information to clarify, if you still have time in that 15 months that you have to provide evidence.

Steven:
OK next question. "If online business only, what is sufficient evidence?"

Laura:
So obviously a lot of businesses these days are operating online only. What you want to provide in that case is screenshots of how you're using your trade mark on your website, you can use tools like the Wayback Machine, which show kind of snapshots in time of when you've been using your trade mark and what the website may have looked like at that time.

You can provide information about your sales, if you have statistics about whose been accessing your website, how they were led there, all of that information can be useful, including things like your social media, that can often show how you've been using the trade mark across different times.

Just trying to think if there are any other aspects to the online, but you should be able to provide examples of just about everything that a physical business can provide, just without the photos of kind of the outside of your building or things like that, so it's definitely possible to provide successful evidence of use when you are online only.

Steven:
OK so this next one's quite a long one, stick with me. "What can I do in this scenario? I own a registration for a word mark. I file an application for a logo containing that word as the only verbal element in same goods of my word mark. My logo application encounters an objection based on a registration for a word mark which is registered after my word mark registration. Can I rely on my word mark registration to support registration of the logo as I own a registered right for the word included in my logo which conflicts with the sighted mark instead of filing evidence?"

Laura:
So this is a kid of case by case example. If I'm understanding this question correctly, it's that a trade mark has been filed for just a plain word and then later you're wanting to file that same word with the logo but in the meantime, someone else has obtained registration of a trade mark, in the middle, and now it's blocking you from having your trade mark.

So what could happen here is if that trade mark in the middle is not yet registered but it's still pending, the person may not be able to overcome the issues that they've faced and once their 15 months time limit is up, you may find that it's no longer a barrier to the acceptance of your trade mark and it will be able to be accepted.

So that's one option if you don't mind kind of waiting for their application to fall of the register if you will, if it's still pending. There's also the situation where that mark has been registered and it will remain an issue, or you do want to get your trade mark a bit sooner.

So this is one of those things we can consider, under other circumstances. If your new trade mark, the one with the logo, does claim the same goods and services as your earlier trade mark, often this can be persuasive evidence for us to consider under other circumstances, but you may face issues where if you're expanding the goods or services that you've claimed, it may be that you now are claiming broader rights than what you originally had.

What I would recommend in this specific circumstance is calling the examiner who examined this mark for you, because they'll have the best idea of which of these hypotheticals applies to you, and will be able to let you know what your options there are. Or feel free to send us an email to communication@ipaustralia.gov.au with some further details and perhaps examples of your two trade marks and I'll be able to help you out with that offline, cos it is quite a specific one so I want to make sure I'm giving you the best information for that.

Steven:
OK next question. "Would evidence of use include like a www address, social media handle, etc?"

Laura:
So these things can be, they can form part of your evidence. Simply having the domain name or having the social media handle, these sometimes alone, won't be enough to prove that you've been using the trade mark if you haven't actually started trading in the goods or services.

So simply having the website or having the social media page without any kind of business associated with that, won't be enough. But if it does show how you've been using the trade mark, if you do have posts that show the trade mark in connection with your goods or services earlier to the application date of the other trade mark, then these can be helpful.

So definitely include them and if it's not enough, the examiner will write back to you within 20 business days and let you know kind of what further information they might need from you in order to have the issue overcome.

Steven:
OK next question. "To what extent does advertising on the world wide web count as evidence of use in Australia?"

Laura:
It can count as evidence of use in Australia if it's clear that your goods are being marketed to people in Australia. So if you're shipping to Australia, if you've actually had sales in Australia, these things can be useful.

If you're advertising kind of internationally and it's not particularly targeted to Australians or you haven't had many sales in Australia, so you'll need more than just having advertisements generally on the web. So they do need to be focused on Australian customers.

Steven:
OK next question. "Is there any additional probative value if my client's declaration is submitted in the form of a statutory declaration under the Oaths and Affirmations Act rather than merely a declaration under the Trade Marks Act?"

Laura:
As far as I know, we would consider both of those the same in the course of examination. I can't speak for oppositions and hearings proceedings, but we accept a declaration, um as kind of what a declaration is. You're declaring these artefacts, um so we do take those, um we give as much weight to those as we do to a statutory declaration.

Steven:
OK next question is: "Has the standard changed at all recently? For context, some of my colleagues have filed evidence recently which did not satisfy the examiner but they consider that it would have been more than sufficient in the relatively recent past."

Laura:
I can't say that the standard has changed over the past few years. Perhaps in relation to Section 41 we've tightened practise around a few things, but Section 44 there certainly hasn't been any large change within the office. It may be a case-by-case type thing like obviously the evidence for each trade mark is assessed on its own merits.

But if you did want to send an email through with some examples, perhaps I might be able to give a explanation of what has happened there, but I would say the reason just is, it's a case-by-case consideration and there may be additional considerations to be made in this case where evidence was recently filed as opposed to those that have been seen before.

Steven:
Yep. Next question is: 'What is the preferred format for receiving responses, i.e. PDF or Word doc?

Laura:
We don't have an official preferred format as far as I know. That might vary from person to person, either of those are fine, they both come through to examiners in the same way. My personal preference is PDF but I certainly can't speak for everyone so whatever's the best for you, feel free to send it through in that format. As far as I know, I don't think we have an official preference.

Steven:
Next question. "I'm defending a trade mark. If I end up giving consent instead of defending, could this become a problem for me?"

Laura:
I think this is one of those instances where IP Australia can't really weigh in. It may be best to seek legal advice from a trademark attorney in relation to the specific issue that you're having. Yeah these are the kinds of legal considerations that we stay out of as a Government administrator, so it may be best seeking legal advice for your specific situation here.

Steven:
OK next question. "For clarification, to submit evidence of prior use or honest concurrent use, the trade mark must have been used prior to the priority date of the cited marks. If so, how would the applicant decide which type of evidence to submit to overcome the citation. For example, which type of evidence would yield a higher chance of overcoming the citations as it seems from this presentation that evidence of prior use has a lower threshold of proof."

Laura:
So in the case of prior use, the trade mark must have been used prior to the priority date of the cited marks, but for honest concurrent use it doesn't necessarily have to be. So there is certainly a lower threshold of proof for prior use so most routinely, people would try to overcome the issue using prior use because you just simply have to show that you've been using trade mark since before the other person applied for theirs.

For honest concurrent use, the scenario where you'd use this is if you haven't been using the trade mark since before the other person applied for theirs.
So it may apply to situations where say for example, cited trade mark was applied for 30 years ago but you first used your trade mark 20 years ago.
You've been using it for a significant amount of time but not as long as the earlier trader. So I hope that clears that up there.

Steven:
OK so this next question: "Does receiving a consent letter during examination preclude the other party from filing an opposition. So can they change their mind?"

Laura:
Again, this is one of those situations where I don't think we can weigh in as the Government administrator. This would be one best considered with a trade mark attorney. But if there are further details, feel free to send us through an email.

I do think we've come to the end of all the questions that we are able to answer kind of during this session. Some of the others will involve a much more detailed consideration and may not be applicable to everyone.

So if you've sent through a question so far and I haven't answered it, I will be sending you a follow-up email and if there are any other questions that you think of after the presentation, feel free to send them through to communication@ipaustralia.gov.au and we will get back to you with answers there.

If you do have questions specific to your application that's currently pending, the best person to speak to just for some general information is going to be the examiner of your application and like we mentioned before, their number should be listed on ether the first page or the last page of your report, depending on the time that it was sent out.

So just give them a call for a general chat and they'll be able to give you some information. No advice, but just information about your specific circumstances.

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

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