If after lodging your trade mark application, you receive an adverse examination report, do not despair. If you have already invested in your trade mark and have built some reputation around your brand, you may be able to overcome the objection by providing evidence of trade mark use.

What is Evidence of Trade Mark Use?

Evidence of trade mark use is proof that you are using or planning to use your trade mark in the marketplace in relation to the goods and services you are claiming in your application. Evidence of trade mark use must demonstrate that you are using, or will use, the trade mark in trade. That is, as a badge of origin regarding the exchange of goods or services for money or other kinds of compensation – something that clients or consumers use to rely on to determine who is providing the goods or services.

What Kind of Evidence do I Need to Supply?

The evidence you will need to supply to the examiner will depend on what objection or objections are raised against your trade mark. You can read more here about distinctiveness objections under section 41 of the Trade Marks Act, as well as objection/s based on section 44 of the Trade Marks Act in our next article.

Examples of Trade Mark Use

This is not an exhaustive list, but examples of evidence of trade mark use includes:

  • Information about the history of your trade mark such as when and where it was first used and how it was chosen;
  • Pictures or samples of your goods with your trade mark;
  • Pictures or samples demonstrating your use of your trade mark in your services or in relation to your services;
  • Pictures or samples showing that you are offering your goods or services using your trade mark;
  • Pictures or samples of your trade mark on the packaging of your goods;
  • Pictures or samples of your trade mark on your advertising materials;
  • Pictures or samples of your trade mark on your marketing collaterals;
  • If you have a website, a screenshot of your trade mark used on your website;
  • Examples of invoices and receipts issued by you in relation to goods or services associated with your trade mark;
  • Database of clients or customers who purchased the goods or services with your trade mark;
  • Information about your annual turnover in Australian dollars for goods or services sold using the trade mark;
  • Information about your annual advertising or promotional expenditure for goods or services associated with your trade mark;
  • Information about your expenditure in promoting or advertising the trade mark;
  • Comprehensive details of your business plan or other documents proving that you intend or have intention to use the trade mark in relation to your goods or services; and
  • Declarations from clients or customers stating that they are familiar with your trade mark and have bought or distributed goods or services with your trade mark.

How Much Evidence do I Need to Supply?

A good general rule is to provide as much evidence of use as you can. It is generally better to provide too much evidence than not enough. As mentioned above, there are specific requirements when supplying evidence of use that will depend on the kind of objection your application needs to overcome. 

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If you have any questions about what evidence of use you need to supply to IP Australia to overcome an adverse examination report, let our trade mark lawyers know on 1300 544 755.

Raya Barcelon

Next Steps

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.