This is the transcript for the webinar on Advanced Trade Marks Evidence of Use Section 44

Hi everyone, my name is Steven

And I’m Laura

And we’ll be your hosts for this session, thank you for joining us.

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

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

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 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.

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.

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.

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.

Specifically, we’ll be looking at:

  • When to provide evidence
  • What the evidence needs to show, and
  • What kind of evidence to provide.

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 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.

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.

If you have received a report raising 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. 

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’re claiming very different goods or services, then they can both be registered.  

By supplying evidence to overcome the issue, you are trying to show that your mark should be allowed to be registered, even though someone else already has rights in a similar mark.

These are the 3 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.

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 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.

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. You can find out the date that the earlier trade mark was applied for by looking at the details of the earlier trade mark 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, the evidence that you provide will need to show the examiner all of the things that are listed on the screen. We’ll step through these one by one.

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.

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. If you have been using the trade mark for more than a decade, you might consider showing one use per year for each year that you have been operating or providing documentation such as annual sales figures. Any dated examples of use can assist you in establishing the continuity of use.

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 the ones that the earlier trade mark has claimed, 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.

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.

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.

If you are 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.

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 2 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 2 similar marks will be unclear.

To determine whether they can accept your trade mark under honest concurrent use, the examiner will be looking at 5 key criteria.

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 are being used in the same part of Australia.

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 aren’t aware of any confusion that has occurred, you should let the examiner know. If 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 4 criteria will need to be very strong.

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.

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.

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.

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 about 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.

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.

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.

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 trade mark attorney to help.

Now we’ll move onto other circumstances.

You may be able to provide information about other circumstances that would enable the examiner to accept your trade mark.

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.

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 the trade mark. If such a letter is provided to IP Australia, we consider that this is sufficient to withdraw the issue.

Choosing this option can come with risks. By contacting the earlier owner, you will be notifying them about your application and bringing yourself and your trade mark to their notice. While it is true that they may grant consent, there is also a danger that they may not only refuse consent, but also take further steps to protect their rights in the marketplace, if they feel that your trade mark use infringes upon their established intellectual property rights.

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.

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 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.

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

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.

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.

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.

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.

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.

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.

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.

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.

 

Last updated: 
Tuesday, September 1, 2020