Overcoming an adverse report with evidence of use
After you file your trade mark, you might receive an Adverse Report from IP Australia. This will set out any objections they have to your application and the reasons for that objection.
Using Evidence of Use to Overcome an Adverse Report
IP Australia may object to your trade mark because it is not capable of distinguishing your goods or services from another trader’s (section 41 objection), because an earlier trade mark registration exists (section 44 objection), or another reason. To overcome those objections, you may supply evidence of use to show you have a reputation in the trade mark, or that you used the trade mark before the earlier registration. If you plan to show evidence of use, your use must be:
as a trade mark (identifier of your goods or services);
in the course of trade;
used in Australia;
on or in relation to all the goods or services claimed; and
by the trade mark owner, the previous owner, or an authorised user (e.g. a licensee or franchisee, requiring specific control mechanisms).
Types of Evidence to Show
You will need to prepare a statutory declaration attaching the evidence of use. This declaration must be signed by someone with knowledge of the trade mark’s use. Although not necessary, it is strongly recommended that a trade marks attorney prepares and lodges the statutory declaration and evidence of use on your behalf to ensure all key information is provided to put you in the best position of IP Australia accepting your evidence. Often, IP Australia receives brief declarations that include insufficient evidence, and upholds its objections.
The declaration should set out the history of the trade mark, and include exhibits of evidence that substantiate the use. The declaration and exhibits of evidence should include at the very least:
Date of first use of the trade mark on goods or services;
How long the trade mark has been used;
Where the trade mark has been used (specific states or territories, or nationwide. Overseas use is irrelevant);
The specific goods or services sold under the trade mark, and examples of how the trade mark has been used on them (e.g. images of the product, packaging, marketing, and invoices, all of which preferably including dates);
Annual advertising expenditure to promote the trade mark;
Annual revenue figures for the goods or services sold bearing the trade mark (broken down for each good or service, as needed).
Other evidence that you may include to strengthen the likelihood of your evidence being accepted by IP Australia includes:
types of advertising (e.g. internet, social media, influencer promotion, television, radio, print);
articles and publications that reference the trade mark or show the goods or services;
estimate of market share;
costs of each individual good sold bearing the trade mark;
use on your website (and historical use, obtainable from the Wayback Machine) and analytics on your website;
your customer base;
your distributors or retailers; and
customer surveys or questionnaires.
If you are trying to overcome an earlier trade mark, you will need to show evidence of use dating before that earlier trade mark was filed.
If you are trying to overcome another objection, you will need to show evidence of use dating before your trade mark filing date.
Intended Use
In limited circumstances, you might be able to show evidence of intended use. IP Australia might consider this if your trade mark application is to some extent inherently adapted to distinguish. This evidence should show your business plans around the goods and services bearing the trade mark. This could include advertising and sales plans and product pitches to retailers.
How much evidence needs to be shown?
There is no minimum amount required, however the Trade Marks Examiner needs to be satisfied based on the evidence that the trade mark should be accepted. The more evidence that is submitted, the more likely your trade mark will overcome a distinctiveness objection. Typically, 5 years worth of evidence is a good aim however this might be more or less depending on the evidence you can show. If you are showing evidence of use before an earlier trade mark was filed, you may not need to submit as much evidence as you only need to demonstrate earlier use on all the goods or services you are claiming.
Unsure where to start in compiling evidence?
I provide low-cost services for overcoming Adverse Reports with evidence of use, so you can put yourself in the best position and save yourself the time and stress of preparing a declaration from scratch. I can help you identify what evidence you need to submit, prepare the declaration and exhibits of evidence, and submit on your behalf.
If you are overwhelmed about where to start or just want a professional to assist, contact me today and send me your Adverse Report. I will provide my initial thoughts and the associated costs.