Some problems with a trade mark may be able to be resolved by providing evidence of use. The trade mark examiner will identify in their report whether the submission of evidence of use is an option.
Evidence of use is usually information about how your trade mark has been used and promoted. The type of information you may wish to submit as evidence will depend on what issue has been raised by the trade mark examiner.
Evidence of use consists of a declaration accompanied by exhibits which support the statements made within the declaration. There are two common issues (grounds for rejection) in the Trade Marks Act 1995 (section 41 and 44) which may lead you to provide evidence of use.
The amount and kind of evidence will depend on what issues the examiner has raised in their report.
Under Section 44 the evidence should demonstrate:
- use of your trade mark prior to a similar or identical trade mark with an earlier priority date (Prior Use) (see Section 44 (4) ) or
- you adopted or came up with your trade mark honestly and you have been using it concurrently with a similar or identical trade mark to your own with no public confusion between the two trade marks (Honest concurrent use) (see Section 44 (3) (a) ) or
- any other information which you think will address the issues raised by the examiner (Other circumstances) (See Section 44 (3) (b) ).
Under Section 41 the evidence should demonstrate that:
- you have promoted it and used it to such an extent before the date of filing that consumers view it as an indicator of trade source (s41(3))
- you have promoted it and used it to such an extent that consumers view it as an indicator of the trade source rather than as a description of the goods/services (s41(4)). (Capable of distinguishing).
It is not necessary to provide extensive evidence and examples if you can provide the same information with less.
Examples of providing the same information with less evidence
- If you wanted to show your trade mark in use on your goods, providing clear digital images of objects bearing your trade mark will be as effective as providing the objects themselves.
- If you wanted to show prior use of your trade mark, providing a couple of clearly dated examples of advertising or articles will be as effective as providing multiple or hundreds of examples.
Evidence of actual use
Generally you will need to provide evidence that shows use of your trade mark. Evidence of actual use should include:
- a brief history of the trade mark including the date (month/year) when the trade mark was first used on or in connection with the goods or services of your application
- the area/s where the trade mark has been used (states or regions in Australia, and/or countries overseas)
- the goods or services sold under the trade mark
- examples of how the trade mark has been used to sell those goods or services such as:
- digital images of packaging, advertising or promotional material
- annual figures in Australian dollars spent on advertising and promotion
- annual turnover figures in Australian dollars for the goods or services sold using the trade mark
- references to websites.
Evidence of intended use
For some issues you can also provide evidence of use you intend to have. Evidence of intended use should include:
- business plans, pre-launch market research, product launch plans and/or other documents demonstrating a definite intention to use the trade mark
- the goods and services your plan relates to
- figures in Australian dollars for any costs already incurred in preparing to use the trade mark.
You must provide your evidence in a declaration
Exhibits or evidence must be incorporated in a declaration submitted through our online services. Declarations must be in an approved form. An approved form template is available and you can submit your evidence through online services. The declaration must also be from one of the following:
- you, if you are the applicant
- a principal officer or other authorised employee of the company (e.g. a director) if the applicant is a company
- someone you have authorised to make the declaration on your behalf (e.g. a lawyer or trade mark attorney).
You will need to provide different kinds of evidence in your declaration depending on what issues your examiner has raised. Providing clear, digital images of objects bearing the trade mark will be as effective as providing the objects themselves.
Your declaration will need to establish that 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 will also need to provide supporting examples to substantiate your claims.
Your declaration will need to establish the honest use of your trade mark, and you must have used your trade mark in Australia before filing your application. Evidence of intended use only will not be sufficient.
There may be other relevant circumstances that have affected your application. You will need to include these in your declaration.
Your declaration will need to show that you have used your trade mark in such a way that it is capable of distinguishing your goods or services, from those of other traders. This means that your trade mark acts as a badge of origin and consumers see it on your goods and services and know that they come from you.
The type of information you provide will depend on whether the examiner has raised an issue under s41(3) or s41(4).
Can I prepare my evidence myself?
You may prepare and supply evidence of use yourself or a trade mark attorney would be able to assist you.
Will my evidence be confidential?
We will accept your declaration in confidence, however, other people may request access to information you have provided. Please take into account that:
- Letters become available for public inspection
- Declarations may be available for public inspection. Copies of declarations may also be requested under the Freedom of Information Act. If this occurs, we may seek your comments before any release of your declaration.
Communication about conflicting trade marks
If your trade mark is accepted for registration in the face of an earlier conflicting trade mark we will tell the owner/s of the conflicting trade mark/s that this has occurred. They will then have the option of opposing the registration of your trade mark.