When applying for a trade mark, you may encounter situations where you will be asked to present evidence of using your branding. Whether you are launching a new brand or managing multiple existing brands, record-keeping will make your life much easier. This is especially true if you want to protect yourself from competitors or if you are looking to expand your brand overseas. These situations can occur both during the application or after registration of the trade mark. This article will help you identify: 

  • the kind of documents you should keep; and 
  • what details are important in keeping an up-to-date intellectual property (IP) Portfolio. 

Evidence of Use

The most important point to remember with record-keeping is clarity. The easier your records are to understand, the more helpful they will be in supporting your case.

The most effective way to secure evidence of use is to record the earliest date the branding was first used. This will assist in determining if you are able to:

  • overcome an adverse examination; or 
  • oppose registration of a conflicting application.

Publication Advertising

If you have used your branding in published advertising, you should keep a record of this. You will need to compile copies of the publication’s cover or title that demonstrates the date of advertisement as well as a copy of your advert. Some good examples include newspaper articles, brochures, pamphlets, catalogues and flyers.

Photocopy the original publication for your records and keep a digital copy in your evidence files for extra protection. If the advert does not include a date, keep a copy of a corresponding invoice or receipt that confirms that date of use.

If you use the branding on company materials, such as letterheads or business cards, keep copies of these materials as further evidence. Keep in mind that you should always provide corresponding dates of their first use. You may also need to provide evidence of their continued use in your record-keeping.

Online Advertising

Examples of online advertising are another good way to demonstrate your use of branding. Try to keep records of the: 

  • organisation (e.g. Business Insider);
  • website address; and
  • date of the advertisement. 

This can be of particular importance if the advertisement is no longer available. 

It is best if you can record the advertisement as soon as it is available. If this is not possible, you can use the Wayback Machine to obtain a copy of the website from previous years. The Wayback Machine is a useful tool, but it is not always reliable. Accordingly, it is always best to maintain your record-keeping when advertisements are still available.

Trade Show and Exhibition Advertising

Advertising at Trade Shows or Exhibitions can help you demonstrate use, provided you have evidence. You should keep evidence of written correspondence or agreements that prove your brand was advertised at a particular event. 

Your evidence can also be supported by photographs of the advert as it appeared at the event. If applicable, these can include pictures of the stall, signage or other physical display of the brand.

Radio and Television Advertising

If you have advertised the brand by radio or television, your record-keeping should note the particular channel or station on which your advert appeared. Include the date of the advert and any other supporting evidence. Generally, you should have some sort of receipt that proves you purchased airtime to advertise your brand. This type of written evidence is crucial to demonstrating that your advert actually aired. Remember that you want to show that your brand was published in a manner that was accessible to a broad audience. 

Non-Use

Throughout the lifetime of your brand, you may go through periods where you do not use the brand. No matter why they happen, these periods are important to record as they may be used against you to disprove evidence of continuous use. 

By keeping track of these periods, you protect yourself from IP examiners or third parties from using it against you. You may even determine that the brand is not worth protecting based on these periods of non-use. 

If you are compiling this after the period of non-use, try and determine: 

  • the first date you stopped using the brand; and 
  • when you started using the brand again.

Turnover and Advertising Figures

Turnover and advertising figures support all the evidence listed above. Be sure to include the year, the advertising expenditure and turnover. Official documents are preferable, however keeping track in a spreadsheet can help you keep a clear outline of these figures for your records.

IP Portfolio

Creating an IP Portfolio will help you keep track of your intellectual property. It is important to keep internal records of all your IP registrations. A well-kept IP Portfolio clearly outlines:

  • where you use your brand in a particular location or country;
  • important deadlines; and 
  • the status of your IP right. 

This is especially important if you have expanded your brand overseas.

An IP Portfolio not only keeps you organized, but it can be useful when presenting to potential investors or partners. Being able to present a well kept portfolio of your IP can assist in demonstrating your value when pitching your products or brands.

Some important details to note are:

  • the IP itself;
  • the application or registration number;
  • names of the owner(s);
  • description, if it is a stylized logo or composite mark;
  • the date of filing; 
  • the classes claimed;
  • any upcoming deadlines, including renewal.

To set up your portfolio, use the template below as a guide:

Number IP Classes Status Next Deadline
12345 Example 1 45 Registered/Protected 10 July 2030
78910 Example 2 32 Published: Under Examination 04 December 2020

Key Takeaways

Accurate record-keeping can help you to apply for a trade mark and keep track of your intellectual property. When collecting evidence of use, you should make sure all evidence has a corresponding date and create a timeline of any periods of non-use. Turnover and Advertising figures should support your evidence of use. You should maintain an IP portfolio to track important deadlines and the status of your intellectual property. A portfolio is even more valuable if your brand operates internationally. If you need help with record-keeping and managing your IP, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

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