Providing Section 44 evidence

Section 44 of the Trade Marks Act 1995 deals with trade marks which conflict with those already filed with the Office. If a trade mark examiner identifies problems with a trade mark under section 44, it means the applied-for trade mark is considered similar to at least one other trade mark.

You may be able to address this by supplying evidence of use under one (or more) of three different categories:

  • Section 44 (4) prior use
  • Section 44 (3) (a) honest concurrent use
  • Section 44 (3) (b) other circumstances.

Amount of evidence needed

The amount of evidence you will need will depend on the kind of evidence, and on how serious the conflict is with other trade marks. If you believe you can supply evidence, and if you wish to discuss this, please phone the trade mark examiner whose contact details are listed on the examination report.

Prior use

To prove prior use your declaration must include:

  • the specific goods and/or services sold using the trade mark.

You should outline all the goods and services that you use your trade mark on. You can also provide a historical context if you have 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 etc) and expanded into footwear and headgear 12 months later.'

  • The year/month 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 Oct 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.”

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

Use must be continuous, and must be supported by documentation such as annual sales figures. Any dated examples can assist you in establishing the continuity of use

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

You should provide examples such as advertising or packaging material. If these are unavailable, please explain how the trade mark was used. Unsupported statements such as “I first used this trade mark in 1990” will not be sufficient.

Please note: You may be asked to delete some of your goods or services if you can not show prior use for them.

Honest concurrent use

To prove 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 earlier 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 has been used continuously. If it has not been used continuously, when and for how long it has been used.
  • The area/s where the trade mark has been used to sell goods or services (please give States or regions in Australia).
  • Wherever possible you should provide examples of how the trade mark has been used to sell those goods or services. Examples might include copies of pages of advertising or packaging material, photographs of signage showing the trade mark, or images showing use of the trade mark on goods / services themselves.
  • Whether you know of any confusion that has 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 which will help show how the trade mark has been used.

Other circumstances

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

  • if you have 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
  • if the owner of a conflicting trade mark agrees to your trade mark being registered, and gives you their written consent.
Last updated: 
7 June 2016