Providing evidence of use

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

What is evidence of use?

If you've received an adverse examination report for your trade mark application, it may be possible to resolve this by providing evidence of use.

Evidence of use is usually information about how your trade mark has already been used and promoted. It generally consists of:

  • A cover letter, which should include details of the application but shouldn't include any sensitive or confidential material
  • A declaration from you about how you've used the trade mark. This may include confidential business information such as sales figures and market share.
  • Exhibits which support the statements made within the declaration and show use of the trade mark in the course of trade. 

 

What issues can you address with evidence of use?

Your examination report will outline if you need to respond to issues under Section 41, Section 44, or both.

Section 41 deals with whether or not a trade mark is capable of distinguishing your goods and/or services from the goods and/or services of other businesses.

If a trade mark examiner identifies problems with a trade mark under section 41, it means the applied-for trade mark is considered to lack capacity to distinguish. In other words, it could be confused with others. We say that the mark is unlikely to act as a badge of origin, or indicator of trade source.

The examiner will indicate one of these subsections:

  • Section 41(3) - Trade marks having no inherent adaptation to distinguish
  • Section 41(4) - Trade marks considered to have limited adaptation to distinguish.

Section 44 deals with trade mark applications that conflict with others that have already been filed.  If you have a Section 44 issue, your trade mark is considered too similar to at least one other.

You can respond to a Section 44 issue on three grounds:

1. Section 44 (4) — Prior use

Your declaration needs to show you used your mark before the date of the other trader you have had identified against you, and that your use has been continuous at least up to the date you filed your application. You'll need to include supporting exhibits to substantiate your claims.

2. Section 44 (3) (a) — Honest concurrent use

Your declaration will need to show the honest use of your trade mark in Australia before filing your application. You'll need to show examples of how you've been using it — intended use only won't be sufficient.

3. Section 44 (3) (b) — Other circumstances

There may be other relevant circumstances that have affected your application. For instance, if the owner of a trade mark has given you permission to use it.

You'll need to explain these circumstances in your declaration, along with exhibits that support your claims.

How to address section 41 issues with evidence

We recommend you begin by calling the trade mark examiner to discuss your case. Their details will be in the examination report. 

The information below is general guidance.

Evidence to provide for Section 41 issues

In your declaration you must provide evidence demonstrating that the way you've already used your trade mark has led to its distinguishing your goods or services from those of other traders.  

What to include in your declaration: 

  • When the trade mark was first used and the period of use
  • Whether or not you have used it continuously
  • The geographical extent of the use
  • Advertising expenditure and annual turnover figures
  • How your trade mark is used in connection with the goods and/or services so that it's viewed as a trade mark and not a description of the goods.

The following information could also be persuasive: 

  • Indication of market share
  • Individual item cost (this will be considered in the context of turnover figures, since inexpensive goods or services are likely to have a wider market and more competitors than expensive, specialised items)
  • Indication of advertising types including online, social media, television, radio, print
  • Published information or articles mentioning the trade mark
  • Indication of your customer base (who are the major customers in Australia or overseas?)
  • The extent of any activity by distributors (if the applicant sells their goods via a third party, how much presence does the third party have in the market place?)
  • References to web sites where your trade mark is used
  • Declarations from persons of standing within the relevant trade
  • Consumer surveys or other market research.

In general, the longer a trade mark has been in use, the more likely it's capable of distinguishing your goods or services. But this is only relevant if your mark distinguishes you as a trader.

If you're trying to trade mark something that simply describes your goods and services and doesn't distinguish your brand as a trader, then length of time isn't enough.

Example

A producer of canned foods has been using the words 'Baked beans' on their cans for many years. Even though the trader has used a particular font with the same colours consistently, most consumers would not see these words as a brand — but a description of the goods.

In this case, providing evidence of use of the words for a period of time won't be persuasive to an examiner. They have to be convinced the mark is capable of distinguishing the goods of the trader.

If it's been determined that your mark has no inherent adaptation to distinguish, you'll need to provide evidence that — at the time of filing your application — your mark did distinguish the designated goods or services from others.

Any use after the filing date, and information about intended use, will not help your case.

When compiling your evidence:

  • The main evidence must demonstrate use in Australia before the filing date. While you can provide evidence of use overseas as well, the focus must be on how it was used here.
  • The scope of the registration must reflect the use demonstrated in the evidence. The specification, geographical area or even the trade mark may need to be amended to conform with the use demonstrated in the evidence.

Note that evidence of intended use and other circumstances will not be considered for Section 41(3) issues.

If you're addressing an issue under Section 41(4)— trade marks considered to have limited adaptation to distinguish — then evidence of intended use is relevant.

Provide evidence of any business planning you've done, such as:

  • Pre-launch market research
  • Market estimates
  • Product launch plans
  • Advertising and marketing plans.

How to address Section 44 issues with evidence

You must provide evidence in your declaration that argues against the finding that your trade mark conflicts with others.

You can argue this on three grounds:

To prove prior use, your declaration must include:

1. Evidence of the specific goods and/or services sold using the trade mark

You should outline all the goods and services you use your trade mark on, backed with exhibits as proof. You can also give a historical context if you need to explain how you've expanded your use over time.

For example

"The trade mark is currently used in relation to clothing footwear and headgear. We originally began using the trade mark on a broad range of clothing (such as shirts, jeans, pants, jumpers) and expanded into footwear and headgear 12 months later."

2. The month and year when the trade mark was first used in Australia to sell your goods and/or services

You should outline when you first started using the mark and any relevant information if those dates are different for different goods or services.

For example

“We first used the trade mark on foods in October 1990. Following several years of successful sales, we then expanded into our own retail store in May 1995 and began using the trade mark on retailing and food delivery services at that time.”

3. Whether the trade mark was used continuously to sell your goods or services, up to and including the priority date of your application

Use of the trade mark must be continuous, so show this with documentation such as annual sales figures. Exhibits that display dates can be particularly helpful for establishing continuity of use.

4. How the trade mark was first used to sell your goods or services

You should provide exhibits such as images of advertising or packaging material. If these are unavailable, explain how the trade mark was used. Unsupported statements such as “I first used this trade mark in 1990” won't be sufficient.

You may be asked to remove some of your goods or services from the trade mark application if you can't show prior use for them.

To demonstrate honest concurrent use, your declaration should include a brief history of the trade mark, including the following information:

  • When the trade mark was chosen (this must be a significant period of time before you applied to register your trade mark)
  • Why the trade mark was chosen
  • Whether you knew of the other conflicting trade mark when you chose your trade mark
  • The specific goods or services sold using the trade mark
  • When the trade mark was first used in Australia to sell goods or services (please give the year and, if possible, the month)
  • Whether it's been used continuously. If it hasn't been used continuously, when and for how long it's been used for
  • The areas where the trade mark has been used to sell goods or services, specifying states or regions in Australia
  • Wherever possible, provide examples of how the trade mark has been used to sell those goods or services. Exhibits might include images showing advertising or packaging material, photographs of signage showing the trade mark, or images showing use of the trade mark on goods or services themselves
  • Whether you know of any confusion that's occurred between the trade marks
  • The annual figures in Australian dollars spent on advertising and promoting the trade mark
  • The annual turnover figures in Australian dollars for goods or services sold using the trade mark. These figures must cover only the goods or services claimed in your application
  • Any other information or materials that show how the mark has been used.

There may be other relevant circumstances that have affected your application, including:

  • You've been using your trade mark with the permission of the owner of a conflicting trade mark. For example, you may be a subsidiary or related company
  • The owner of a conflicting trade mark agrees to your trade mark being registered, and has given you their consent in writing.

In your declaration you need to show that these other circumstances apply to you, with evidence such as a permission letter.

How to submit your evidence of use

1. Download a declaration form and fill it out, adding more pages if needed.

2. Include a cover letter which sets out the:

  • Name of the applicant
  • Trade mark
  • Objection you're answering.

Note: don't include any sensitive or confidential business information as they may be made available for public inspection under s217A.

3. Provide a few clearly dated examples as exhibits to support your claims. These might include pictures of the trade mark on your goods or services.

Note: we don't need dozens of images to be convinced, and we don't need physical examples.

4. Submit your declaration via online services.

 

Will my evidence be confidential? 

The Registrar must make available for public inspection certain documents that relate to a trade mark. Cover letters are included as material which may be made available for public inspection.

A declaration containing evidence of the use or proposed use of a trade mark won't generally be made available for public inspection. However, other people may request access to a declaration including its exhibits via the Freedom of Information Act (FOI Act).

It's important to remember that:

  • Cover letters are generally made available for public inspection – this is why no sensitive or confidential material should be included in your letter
  • Declarations (including their exhibits) aren't generally available for public inspection, but can be requested under FOI. If this occurs, we may seek your comments before any release of your declaration.