Section 41 of the Trade Marks Act states:

An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons.

However, subsections 41(3) or (41(4) of the Act stipulate two situations where a trade mark that is not inherently capable of distinguishing may still be accepted:

  1. If the trade mark is not to any extent capable of distinguishing the goods or services of the applicant from those of other persons, the trade mark may be accepted if the trade mark does in fact distinguish the applicant’s goods or services (section 41(3)); or
  2. If the trade mark is, to some extent, but not sufficiently, capable of distinguishing the applicant’s goods or services from those of other persons, the trade mark may be accepted if it does or will distinguish the applicant’s goods or services section 41(4)).

Put simply, this means that for marks that are entirely descriptive or would not in any way (but for any use of the mark) distinguish the goods or services, evidence of past use can be provided to show that the mark does, in fact, distinguish the goods or services.

For marks that are only somewhat descriptive, evidence of both past and intended use can be provided to show that the mark does or will, in fact, distinguish the goods or services.

What sort of evidence is required?

The evidence required to overcome an objection raised under section 41 of the Act needs to demonstrate that when a consumer perceives the trade mark they associate (or will associate, for section 41(4) objections) it with the goods and services of the applicant and with no other person.

The evidence required will depend on the particular trade mark and circumstances, but examples of evidence include:

  • Evidence of the period of use;
  • Annual turnover figures;
  • Advertising expenditure;
  • Photographs of use of the mark, or photos of examples of use on packaging etc;
  • Indication of market share;
  • The cost of individual goods/services, or quantity sold;
  • Specific examples of advertising;
  • Publicity mentioning the trade mark;
  • Evidence of the size and distribution of the customer base (such as reviews);
  • Evidence from business partners, such as distributors;
  • Internet evidence, including past websites archived using a wayback machine;
  • Evidence from experts within the relevant industry; and
  • Consumer surveys etc.

The quantity of evidence required will depend on the particular circumstances. For example, a trade mark with a large advertising budget and widespread use may need to have only been in use for a short period of time. Trade marks with limited public advertising exposure may need to show a longer period of use.

Other Factors to Consider

Evidence needs to be filed in the form of a declaration, usually given by the applicant or authorised user of the trade mark. It may be submitted at any time during the application process.

If the evidence does not show use throughout Australia, it may still be possible to obtain registration of the trade mark in the particular State where use has been shown. In cases like this, the trade mark will have protection in that State, but not in other Australian States or Territories.

Similarly, if use can only be shown for some of the goods or services, it may be possible to restrict the claim of goods/services to only those for which use has been shown.


Preparing evidence of use can be time consuming and costly. It is always best to seek the assistance of an appropriately qualified professional when responding to an adverse examination report. LegalVision can assist applicants with responding to adverse reports, and help in understanding what the best course of action is. Of course, in many cases, it is best to speak to someone before submitting the application to minimise the chance an adverse report will be issued at all!

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Daniel Smith

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