25 Aug Trade Mark Tips: Evidence of Use
The concept of use arises frequently in trade mark matters. In this post, we outline when you might need to provide evidence of use, what the evidence needs to show and what kind of evidence to provide.
There are several scenarios where evidence of use may be needed, including:
- To overcome a descriptiveness/non-distinctive trade mark refusal from IP Australia (by showing acquired distinctiveness gained through use); and/or
- During opposition proceedings; and/or
- To defend a non-use cancellation initiated by a third party; and/or
- To secure or maintain a registration where use is a requirement of registration (e.g. in overseas markets such as the US); and/or
- To enforce unregistered rights acquired through use.
While your attorney will provide guidance and will prepare and submit evidence on your behalf, you will need to collect and provide the relevant materials to them for submission to IP Australia (or the relevant IP Office).
Overcoming hurdles and opposing parties
If you receive an adverse examination report from IP Australia during the application process, the Examiner may reassess their concerns about your trade mark in light of evidence submitted.
If your trade mark application is accepted for registration by IP Australia it will go through an opposition period. During this period (usually two months) if a third party files an opposition to your trade mark you may choose to defend that opposition, in which case it may be necessary for both parties to file evidence in respect of the opposition proceedings.
Use it or lose it
In Australia there’s no requirement that an applicant must show evidence of actual use, either before registration or on renewal of an Australian trade mark.
Having said that, trade mark rights can be vulnerable to cancellation where brand owners are not able to demonstrate evidence of use. This may become an issue if you receive notice that removal proceedings have been filed by a third party, in which case the onus will fall on you as the owner of the trade mark to demonstrate that there has been commercial use of the trade mark during a continuous period of three years*.
In other countries, use requirements may be different. The US Patent and Trademark Office (USPTO), for example, generally requires that a trade mark applicant provides evidence that the mark has actually been used in the USA before the certificate of registration can issue.
What kind of evidence should you provide?
A good habit to get into, even before applying for a trade mark, is to keep physical and visual records of any use of your trade mark (in Australia or any foreign jurisdiction where registration is sought) as well as details of advertising expenditure and promotional costs relating to the trade mark.
Ideally, you will have examples such as:
- Photographs showing the mark printed, embossed or otherwise applied to goods;
- Photographs or dated design drawings of packaging;
- Photographs of vehicles or company property bearing the mark;
- Marketing materials including brochures, leaflets, price lists etc;
- Company stationery including business cards, letterhead etc;
- Customer orders or invoices from each year of use, pertaining to provision of the goods or services in Australia;
- Website screenshots (hot tip: you can use the internet archive Wayback Machine to ‘save’ website pages at regular intervals – see https://archive.org/web/);
- Independent press publications, newspaper, journal articles;
- Extracts from advertising (including printed, online, TV etc.; and
- Photographs of exhibition stands, programs etc. from trade shows.
By gathering and storing evidence each year your business is trading, it will make it much easier for you if you are suddenly in a position where you need to defend your trade mark rights and provide evidence.
For assistance with matters requiring filing of evidence, contact Kellie Jukkola [email protected] or Geraldine Rimmer [email protected]. We encourage brand owners to seek professional advice and assistance to ensure the best brand protection strategy and outcome.