This is the transcript for the webinar on Advanced Trade Marks: Evidence of Use Section 41

Kalyx: Good afternoon everyone and welcome to today’s webinar and the first in our Advanced Trade Marks series, Evidence of Use - Section 41. 

I’d like to introduce today’s presenters, Laura and Steven. 

Laura and Steven 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 today. 

I’ll hand over to Laura and Steven and we can get underway. 

Examiners:

Hi everyone, my name is Steven and I’m Laura and we’ll be your hosts for today’s session. 

Steven: As Kalyx mentioned, the focus of our webinar today 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 today’s webinar is providing evidence to overcome an issue with your trade mark application. Specifically, an issue that has been raised under section 41 of the Trade Marks Act. 

If you have already submitted your application, and received an adverse report that mentions section 41, 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 received from your examiner, they will have mentioned section 41 and will have stated that providing evidence of use is an option to overcome the issue that they have raised. In many cases, it may be your only option to overcome a section 41 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 41. Section 41 looks at whether your trade mark is capable of distinguishing your goods and services from your competitor’s goods and services.

Laura: A trade mark should be something that can act as a badge of origin. This means that when customers see your trade mark, they know that it indicates goods or services that come from your business.

Descriptive words often can’t act as a badge of origin, because customers see them as describing the product, rather than indicating who they come from, and other people should be able to describe their products using those words. 

Steven: Other examples of marks that are unlikely to act as a badge of origin include those that contain common surnames or the name of a geographic location, or those that are common to the trade (such as serial numbers or commonly used slogans).

Laura: If you try to register a trade mark that consists of material that other traders should also be allowed to use, the examiner will raise an issue under Section 41. They will send you an adverse report detailing why there is a problem and how you might be able to overcome it. Most often, you do have the option of providing evidence of use to try to overcome the issue and get your mark accepted.                    

Steven: Let’s run through a quick example to illustrate this concept.

Laura: We’d likely all be familiar with the computer company APPLE.

The word APPLE is capable of distinguishing their various computer goods, because this isn’t a word that other computer companies would normally need to use.

Steven: If somebody who was selling fruit tried to register the word APPLE as a trade mark, it wouldn’t be fair for them to be the only people allowed to use that word, and so we would raise an issue under Section 41 of the Act.

Laura: This is an extreme example, because no amount of evidence could convince IP Australia to allow that one person to have a monopoly over the word APPLE in the apple industry.

But where the trade mark isn’t quite this descriptive, providing evidence of use can sometimes overcome the problem. Depending on the severity of the issue with your mark, you might be able to show us that through use of your trade mark, what was once a descriptive word can now operate as a badge of origin, because of the effort and expense you have put into promoting your mark as a brand. 

Steven: When you submit section 41 evidence, your aim is to show the examiner that your mark is capable of distinguishing your goods or services from those of anyone else. This means when consumers see your trade mark, they know that it designates your specific goods or services, rather than the goods or services more generally or descriptively.

Laura: Section 41 is broken down into two relevant parts – subsection 41(3) and subsection 41(4).

You will know which category your application falls into by looking at the report you have been sent. In the *Actions you can take* part of the report, it will mention either 41(3) or 41(4), or maybe even both. 

Subsection 41(3) applies to trade marks that have no inherent adaption to distinguish. These are trade marks that other traders need to use. 

Subsection 41(4) applies to trade marks that have limited adaption to distinguish. These are trade marks that other traders are likely to want to use – but don’t necessarily need to.

The type and amount of evidence you will need to provide will be different depending on which issue is raised. Generally speaking, a ground for rejection under subsection 41(3) will require more substantial, persuasive, and high value evidence. 

Steven: The main differences are, that for subsection 41(4), you can provide evidence of use from before, or after, the day that you applied for your trade mark. For subsection 41(3), the only evidence that will be relevant, is evidence that you used the trade mark in Australia before you applied for it.  

For subsection 41(4), you can also show how you plan on using the trade mark, if you haven’t actually used it that much already. 

These plans do have to be quite in-depth. 

You can’t simply show that you’ve considered using the mark and have started making preliminary plans; you would have to demonstrate that you’ve committed to using the mark and that you have solid commercial plans in place. 

You might be able to show this by providing pre-launch market research and market estimates, product launch plans, and information about your advertising and sales plans. This option isn’t available with subsection 41(3) – it all has to be actual use of the mark, before you even applied.  

Laura: No matter which ground for rejection applies to your mark, your aim is to demonstrate to the examiner that only you should be allowed to use your trade mark in relation to the goods or services that you have claimed. 

If the examiner raises a section 41 issue, it means that their research showed that other people should be able to use the mark you’ve applied for or something pretty similar to it. 

So what you’ll be trying to show with evidence is that you’ve invested so much time, effort and expense into promoting the trade mark as being an indicator of your goods or services, that you should get exclusive rights to use it. 

Steven: The evidence you submit should be supplied in a declaration that is signed and dated by you, with all your evidence attached to the declaration. 

When the examiner receives your evidence, there’s a few things they’re looking out for.

Laura: First of all, the examiner will be looking to assess whether your use of the trade mark is as a trade mark. 

This means that you aren’t using the words descriptively yourself, but that you are promoting the trade mark as an indicator that the goods or services that have that trade mark on them are coming from you or your business. 

We’ll look at McDonalds as an example. 

They use the trade mark McDonalds to differentiate their product. 

When people buy a cheeseburger from a shop displaying the McDonalds trade mark, they know that it is coming from the business they know as McDonalds and they know what to expect from the product. 

That’s use of a trade mark as a trade mark. 

On the flipside, would be the word cheeseburger or something like “double cheese” – these might be words that McDonalds uses, but they are known words with ordinary meanings, and they aren’t just used by one trader. 

Other businesses selling CHEESEBURGERS want to be able to describe their goods using these ordinary known words, so we can’t allow just one business or person to register CHEESEBURGER as a trade mark, if they’re selling food. 

So to fulfil the requirement for use as a trade mark, you need to show that your mark is used to distinguish your goods or services from your competitors, and that the mark isn’t something that other people should be allowed to use. 

Steven: Next up is use in the course of trade. This means actually using your trade mark in conjunction with offering the goods or services for sale. 

Many of the preliminary steps that are taken when setting up a business don’t count as use in the course of trade. Things like… registering your business name, securing a domain name, setting up social media profiles… These don’t count because you haven’t shown your customers the goods or services that you are offering for sale using your trade mark. Similarly, showing proof that you hired a graphic designer to design a logo or the packaging of your product, or that you prepared a price list for when you start trading generally won’t assist you in fulfilling this requirement. Essentially, you want to demonstrate that customers have been exposed to your trade mark and that your goods or services have been offered for sale in connection with the trade mark. 

Laura: The third consideration is whether the use is Australian use. 

This one is quite straightforward, you’re trying to demonstrate to the examiner that your trade mark has been used a trade mark, in the course of trade, in Australia.  

Using a trade mark online often means it is seen by people all around the world, but this doesn’t automatically count as use in each country where someone has accessed the website. 

It’s likely that most people who are tuned in to today’s webinar are using their trade marks in Australia, but if you have any concerns about whether your use will count as use in Australia, we definitely recommend giving your examiner a call to discuss your unique circumstances. Your examiner’s name and phone number will be listed on the adverse report that you have been sent. 

Steven: Now we’ll move to the fourth consideration. The examiner looks at whether your use is upon or in relation to the relevant goods and services. In your evidence, you should aim to demonstrate that you have been using the mark in relation to all of the goods or services that the issue has been raised in relation to. If you have claimed a wide variety of goods or services, but are only using the mark on one or two of those items at the moment, it might be possible to restrict your claim to just those items. Your examiner will let you know if this is the case. 

Laura: The final consideration is whether the use is by the person claiming to be the trade mark owner. 

You should aim to the show the examiner that it is you or your business that has been using the mark. 

You may also be able to show evidence from a predecessor in title or someone you’ve authorised to use the mark. 

Steven: This isn’t to say that you shouldn’t show third-party mentions of your mark – such as newspaper articles or other people mentioning your trade mark on social media. In fact, those can be very useful if it is clear that they are referring to your business. 

Laura: All this means is that if someone else used to use the mark, and now that they’ve stopped, you've decided to take it without having some kind of commercial negotiation with them, only the evidence of you using it will count. 

Again, most people listening in shouldn’t have any difficulties showing this, but please contact your examiner if you do have a unique situation. 

Steven: Our next slide looks at an example of that first consideration, “use as a trade mark”, as that can often be one of the more difficult concepts to grasp. We’ll use the hypothetical example of MYLKA’S MILK. 

Laura: Let’s assume that MYLKA’S MILK are Australia’s biggest milk company. 

They are stocked in every shop, spend hundreds of thousands of dollars on advertising, and have been the market leader in Australia for over two decades. Their MYLKA’S MILK trade mark is protected and well recognised, but they are now interested in protecting their tag line, THE FRESHEST THERE IS. They applied to IP Australia for these plain words THE FRESHEST THERE IS, without the MYLKA’S MILK part of their trade mark. When the examiner examined this application, they raised an issue under subsection 41(4) because they found that other people would also like to describe their milk products as being THE FRESHEST THERE IS. Being THE FRESHEST THERE IS is a desirable quality for dairy, and these words don’t indicate any one particular trader at first glance. 

Steven: So in their evidence submissions, MYLKA’S MILK will need to show that through their use of these words, the words have lost their ordinary meaning and are now capable of acting as a badge of origin for their products.   

Let’s say for example that MYLKA’S MILK have included this tagline on every bottle since the first day they started selling milk in Australia. MYLKA’S MILK provide evidence to the examiner that shows how many bottles of milk they have sold, how many shops across Australia sell their milk, and how much revenue they have generated. Let’s assume all these figures are very significant. Things are looking promising for MYLKA’S MILK…. but it all depends how they have been using these words. Can these impressive figures be attributed to the words THE FRESHEST THERE IS? Or is this in fact evidence of use of the MYLKA’S MILK mark only, which wouldn’t be relevant here? 

Laura: It all depends on how they’re presenting and promoting the mark. 

Let’s look at this first image of the milk carton –on the front in huge bold letters are the words MYLKA’S MILK. When you flip over the carton – you’ll find the nutritional information and a short paragraph setting out MYLKA’S history. There in that paragraph, in tiny writing, it also says something like… MYLKA’S MILK has been made from fresh cow milk in Australia for over 30 years. We can say without doubt, it’s the freshest there is. 

Compare this to the second milk carton, that has the words “THE FRESHEST THERE IS” blasted across the front, with a small MYLKA’S logo at the top. Consider also that in all MYLKA’S advertising, the words THE FRESHEST THERE IS are the words that get your attention. They are actively showing customers that these are their words and when you see these words, you know you’re buying MYLKA’S MILK. 

Steven: In this comparison, the first example cannot be said to be trade mark use. They’ve used this descriptive phrase alongside other descriptive material such as the ingredients and how long they have been making milk. In the same way that no one can obtain a monopoly over the words COW MILK, MYLKA will not be able to obtain a monopoly over THE FRESHEST THERE IS. In this example, it is clear that the trade mark being relied on is MYLKA’S MILK, not THE FRESHEST THERE IS. We therefore cannot give any weight to the revenue and advertising figures provided, as these cannot be said to be in conjunction with the words being claimed. 

Laura: However, with the second example, it’s clear that they have been trying to promote these words as designating their products, and their products only. Consumers have come to associate this otherwise descriptive phrase with MYLKA’S products alone, through their promotion of the words as a trade mark. We will be able to consider the revenue and advertising figures as relevant, for as long as the milk bottles have had THE FRESHEST THERE IS as the big logo on the front. 

Steven: Ultimately the question that the evidence should be seeking to answer is “Have consumers come to see “THE FRESHEST THERE IS" as a badge of origin that distinguishes MYLKA’S MILK from its competitors?” 

Similarly, when you are considering whether providing evidence is an option for you, keep in mind that your evidence of use will need to show the trade mark being used as a trade mark. Evidence that shows it being used descriptively will not be persuasive in overcoming the issue. 

Laura: So we’ve stepped through what the evidence needs to show, but now we’ll move onto how you can actually go about showing it. What kind of evidence is going to help you show that your trade mark is capable of operating as a badge of origin? 

We class these types of evidence into high-value evidence and low-value evidence. High-value evidence is the type of information that is more likely to help you achieve acceptance. Low-value evidence is the type of information that generally won’t assist your case. It’s ok to include it, but if it’s the only evidence you are able to provide, the likelihood that you will be able to meet the threshold for evidence is lessened. 

Steven: We’ll start with the things that aren’t so helpful. 

First up, business name registrations. You don’t need to provide us with evidence that you have applied for your business name. This is because business names are simply administrative. There is no requirement for them to be distinctive, and merely registering the name does not amount to actually using the trade mark or intending to use it. 

Likewise, domain name registrations. Simply owning the rights to use a particular domain name does not amount to use of the trade mark in relation to the relevant goods or services. 

Laura: Documents or communications that are internal to your business generally do not satisfy the requirement of being use in the course of trade. This includes things such as business plans, internal style guides, or other planning documents that only those within the business have access to. 

Documents and communications that your customers or potential customers can see, will be more useful. 

Steven: In the final line – unsupported claims of reputation and market research – the important word here is unsupported. It’s actually really important to provide information about your reputation and your position in the market, but you have to back it up with substantial evidence for it to be meaningful. 

Laura: So, what do we consider to be substantial evidence?

The first example of high-value evidence is income figures. 

You should aim to show the examiner the amount of income that has been generated through your use of the trade mark on the goods or services that you have claimed. 

This can be presented in a simple table with the years listed down one side, and the relevant annual income figures on the other. 

Steven: It can also be helpful to provide the examiner with information about how many sales you have made, and the unit cost of the goods or services that you’re selling under the trade mark. This helps them understand the context of your income and determine how substantial it is. 

Generally speaking, the more goods or services you have sold or provided, the more people are exposed to your trade mark and the more the marketplace is likely to recognise your mark as indicating a badge of origin.  

Laura: You might also be privy to information about your market share. This can be good information to provide to the examiner so that they can get a sense of your place within the relevant market. Any such information should be credibly-sourced, to be relied upon.   

Steven: Next up is advertising. You want to demonstrate to the examiner that you have invested a significant amount of resources into promoting your trade mark as something that differentiates your specific goods or services from those of your competitors. 

There are endless ways you can show this, because there are endless ways you can promote your products! 

You may have promoted your trade mark online – on your own website or social media pages, or on the websites or social media pages of others. You may have promoted your trade mark in print media such as newspapers, magazines, pamphlets, and brochures. 

Laura: You should send in examples of each of your different types of advertising, but also provide context around them. 

For example, you might send us a copy of a pamphlet that you put together. 

The existence of the pamphlet alone is not sufficient to demonstrate the extent of your advertising. 

You should advise us how many copies were distributed, how and where they were distributed, and on which dates. 

Likewise, with something like signage, you should let us know the size of the sign, where the sign was displayed, for how long, and how many people were likely to have seen the sign, if that’s information that you have.  

With online content, you can use online tools such as the Wayback Machine   to show a snapshot of what your website looked like at different points in time. 

If you’re relying on social media content to demonstrate your advertising, you should also provide insights into how many people liked or followed the page at the time of the post, and what the rate of interaction was. 

No matter how you have been promoting your trade mark, the important thing is to provide information about the context of the promotion.   

Steven: Now we’ll move onto ‘examples of use in the marketplace’. This can be things like the use of your trade mark on the goods themselves or on their packaging; use of your trade mark on the website that you sell your goods or services from; or use on your physical premises. Any form in which you use your trade mark in connection with the goods or services you have claimed can be supplied here. The important things are... that the use should be visible to the public and it should make a connection between the trade mark and the goods or services offered.   

Laura: The next dot point is mentions in media. 

If other people are talking about your trade mark in connection with you, this is a really good thing. 

It shows that you’re building brand awareness and that other people know your trade mark is referring to you and your goods or services exclusively. 

Examples of mentions in media can include other people recommending your product by referring to the trade mark, or someone doing a profile on your business that attributes your trade mark to your goods or services alone. 

This could be on social media or other websites, or in print form. 

Steven: It’s important to demonstrate to the examiner how long you have been using the trade mark on the goods or services that you have claimed. It may be that you started selling just one or two items and then branched out over time. You should provide evidence from when you very first started, and from when you started to expand the brand. Using the online tool Wayback Machine can be a good way to show when you started using your trade mark online. It can also be good to provide evidence regarding the dates of important milestones, such as when your business expanded, started up in a new location, or started offering new products. 

To supplement all of the evidence supplied so far, you can also provide website analytics or information that you have available about your customer base. 

Laura: As we mentioned earlier, if the issue with your trade mark was raised under subsection 41(4) and you haven’t been using the trade mark for very long, you might wish to provide evidence of intended use. In this case, internal business planning documents can be useful to show exactly how you plan on using the trade mark and how you plan on educating your customer base that the mark distinguishes your goods or services from those of your competitors.   

This list of examples should give you an idea about the kind of ways you can show that you have been using your trade mark     as a trade mark      in the course of trade     in Australia     upon or in relation to the goods or services claimed, to satisfy those 5 requirements we stepped through earlier. 

Steven: Of course, this list is not exhaustive. If you have something you think might be of interest to the examiner, there’s no harm in sending it in and seeing what they say. However we can’t emphasise enough the concept of quality over quantity. You will have a much higher likelihood of success if you present your evidence in a way that makes it clear for the examiner to see that your mark has become capable of distinguishing. Instead of providing screenshots of your whole Facebook feed – consider selecting a few different posts from different points in time to illustrate how you have been using the mark over the past few years. 

Laura: You have 15 months from the date that you received the report, to overcome any of the issues that were raised. 

The final date that you can overcome the issues will be listed on the report as your acceptance due date. You should try to submit your evidence about a month before that date, at the latest, to give the examiner enough time to consider all your submissions carefully. If your first attempt at providing evidence isn’t successful, the examiner’s report will explain why, and if you still have time before your acceptance due date, you can try again. 

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’re 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 have 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 may wish to continue pursuing the application and providing evidence.

You could also think about whether you have applied for a unique brand, and whether that’s something that’s important to you.

If a section 41 issue has been raised in relation to your trade mark, there is a good chance that your trade mark and your products may not stand apart in the marketplace. If you’re only just starting out, and aren’t too attached to the trade mark you’re currently using, you may want to take this opportunity to come up with a new trade mark. You could consider creating a more unique distinctive brand so that you can really stand out and be remembered.

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 5 business days.

Then you can decide whether to make your application official, depending on the outcome of the assessment.  

Steven: 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 on the Institute of Patent and Trade Mark Attorneys website – which is ipta.org.au, 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, that will be sent to you if you complete the post-webinar survey. Otherwise, it is available on our website. 

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 use has led to the trade mark distinguishing your goods or services from those of other traders.

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 call the examiner whose name and number will be listed on your report. 

Kalyx: Ok, this brings us to the end of the main presentation. Thanks so much for explaining Evidence of Use – Section 41, Laura and Steven! So we’ve come to the time for a bit of Q&A, and it looks like there are already a few questions coming through. We’ll do our best to answer as many as we can.

End of webinar

Last updated: 
Tuesday, August 4, 2020