It can be very frustrating if your trade mark application is rejected by IP Australia. However, there are different options available to try and overturn this objection. Sometimes, providing evidence of your use of the mark might be enough to overturn your application’s rejection. However, figuring out what types of evidence to provide can be difficult. This article discusses which evidence is best to use in different circumstances when your trade mark application is rejected. 

Types of Evidence

The type of evidence that you will be required to provide to IP Australia will depend on the issue that lead to the rejection of your application. Below is a chart of the different types of evidence to use depending on which issue lead to the rejection of your trade mark application. 

Type of Objection Cited by IP Australia Type of Evidence You Can Use
Your mark is substantially identical or deceptively similar to an existing trade mark application. This application has an earlier priority date and is in regard to similar goods or services as your mark.

Prior Use:

Provide evidence that you have used your trade mark at a date earlier than the priority date of the conflicting mark.

Honest Concurrent Use:

Provide evidence that you adopted or created your mark honestly. Further, prove that your mark has been used concurrently alongside the cited conflicting mark, with no public confusion.

Your trade mark is not capable of distinguishing your goods or services from the goods or services of other persons. This is a strong objection that requires a high volume of evidence. A rule of thumb is to provide at least five years’ of evidence to prove that your mark has become a badge of origin for your goods or services.
Your trade mark has limited ability to distinguish your goods or services from the goods or services of other persons. This objection is not as strong as the one prior. You should provide at least two years’ of evidence of your use of the mark.

 

Types of Evidence

Evidence of use if provided to dispute the above objections and usually refers to information about how you (or others) have used and promoted your mark.

To provide evidence to overturn a rejected trade mark application, you must submit a declaration. This can be submitted on behalf of the trade mark applicant by:

  • an individual;
  • a principal officer;
  • an authorised employee,
  • an agent; or
  • a lawyer.

It is important that the person making the declaration has access to the applicant’s records and files. The person should accompany claims made in the declaration with pieces of evidence that support these claims. The declaration can be submitted to IP Australia digitally via their online portal e-services.

The evidence that you are required to provide will depend on what issue has been raised by IP Australia.

Proving Prior Use

If IP Australia believes that your trade mark is substantially identical or deceptively similar to an existing trade mark application, you may need to prove your prior use of the mark. This means that you will need to show that the sale of your product or service began before the priority date of the conflicting trade mark.

You will also need to prove that you have continuously used your mark since then. If you are unable to prove this for all of your claimed goods or services, then you may need to delete some claims.

Proving Honest Concurrent Use

If IP Australia believes that your trade mark is substantially identical or deceptively similar to an existing trade mark application, you may also need to prove honest concurrent use. In this circumstance, your declaration will need to establish the honest use of your trade mark by providing evidence on the development process for your mark.

Further, you will need to establish that there is no confusion in the marketplace with other conflicting trade marks. You must also have used your trade mark in Australia before filing your application. Evidence of your intention to use the trade mark will not satisfy this claim; you must have actually used it.

Proving Evidence of Use

If IP Australia believes that your trade mark isn’t capable or has limited ability to distinguish your goods or services within the market, you may need to provide evidence of use. In this declaration, you will need to prove that your trade mark has become a badge of origin for your business. It also must prove that your trade mark effectively distinguishes your goods or services from other traders.  

For example, if your mark was the name ‘Only Fridges’, you would need to prove that this successfully distinguishes your sale of refrigerators from other retailers.  

 

To prove that your mark has become a badge of origin for your business, you could provide examples of your advertising and advertising figures.

How Do I Prepare the Evidence?

While preparing the declaration and evidence may sound like a complicated process, you are certainly able to prepare it without legal assistance.

Utilise the expertise of the IP Australia examiner designated to your trade mark for assistance in preparing the evidence. The report provided by IP Australia would contain their details. The examiners at IP Australia can often provide helpful guidance on the evidence that they require to remove the objection.

Evidence Checklist

Below is a checklist that you can print out and use when trying to compile evidence of your use of the trade mark. The checklist is a guide only, so if you are unsure of what evidence to provide, please consider speaking with IP Australia’s examiner or a lawyer.

Evidence of Use Type Evidence to Provide Do I Have This Evidence?
History of Trade Mark Use Date of first use of the trade mark.
Documentation of where the mark has been used.
The goods or services sold in conjunction with the trade mark.
Examples of how the trade mark has been used to sell your goods or services e.g. packaging, website and advertising.
Annual turnover and advertising figures in connection with your trade mark.
Additional information and photographic evidence on how the trade mark has been used.
Additional Evidence Market share of the trade mark.
The cost of the goods or services e.g. Provide example invoices.
Advertising information e.g. Trade shows, industry events, social media advertising, Google SEO spend, print and radio.
Online or print publications mentioning the trade mark.
Information on the key customer base e.g. Young children from ages two to six.
Information on how the goods or services are sold e.g. Do you engage a third party?
Screenshots of the use of the trade mark on the internet.
Declarations from highly regarded people within the industry.
Consumer surveys and questionnaires.
Evidence of Intended Use Declaration of intended use.
Future plans for the use of the trade mark in connection with the goods and services.
Future projected turnover and advertising spend.
Costs of future projects.

Key Takeaways

If you have lodged your trade mark application and received an objection, it does not mean that your trade mark will not one day be accepted.  Acceptance can be achieved by providing evidence of:

  • trade mark use;
  • prior use; or
  • honest concurrent use.

If you are interested in overcoming a trade mark objection and need assistance with lodging evidence, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Sophie Glover
If you would like further information on any of the topics mentioned in this article, please get in touch using the form on this page.
If you would like to receive a free fixed-fee quote for a legal matter, please get in touch using the form on this page.