Preparing an Evidence of Use Report
In certain cases, providing evidence of prior of use of a trade mark can help overcome objections raised during prosecution of a trade mark application. Evidence of Use is documentary evidence showing how the trade mark has been used or promoted and can be used to prove prior use or contest against alleged non-use of the trade mark. The validity of the evidence is determined by the trade mark examiner, and evidence must be submitted in the correct format. Evidence of use typically includes documentation of how the trade mark has been used in commerce, how long the trade mark has been used and any promotional activity related to the trade mark.
Section 44 of the Trade Marks Act 1995 outlines the type and quantity of evidence needed to be submitted in the report. The evidence must demonstrate prior use, honest concurrent use, or other circumstantial evidence that will address the issues raised by the Examiner. To show prior use, there needs to be documentation of the trade mark's use before the opposing trader's use. Honest concurrent use may be established only if the trade mark was used in significantly Australia prior tp the filing date of the application.
Evidence of actual use can include the trade mark' history of use, including when the trade mark was first used on the goods or services it was registered for, the geographical area in which the trade mark was used, the products in respect of which it was registered and examples of how it was used. Images of the trade mark on objects or actual objects would, for example, show a trade mark in use. In certain cases, evidence of intended use, such as business plans or costs already incurred, may be provided.
Section 41 of the Trade Marks Act 1995 establishes the required documentation to show promotion of the trade mark. Promotional evidence can include clearly dated advertisements or articles containing the registered trade mark.
Examples demonstrating the importance of preparing quality evidence
In the case of Australian Char Pty Ltd v The Kingsford Products Company LLC, the main issue was whether the trade mark AU TM 492977, known as MATCHLITE, was being used. Australian Char Pty Ltd couldn’t prove that they were using the trade mark or that they planned to use it. MATCHLITE had been used from 1988 until 2006, when the factory closed. Between 2013 and 2016, Australian Char tried to bring the brand back, but the evidence they provided wasn’t strong enough. Because of this, the Hearing Officer didn’t accept their claims, and it was decided that the trade mark would be removed from all the products and services it was registered for, like making and selling barbecue briquettes.
In the case Inntech Pty Ltd v Pointpal Holdings Pty Ltd, Inntech tried to stop Pointpal from cancelling their logo trade mark, which featured the words "pico life" in a special design. Inntech had used this t rade mark on their website to promote and sell various products in Australia during the required time. They were able to show that the trade mark had been used, although not for every single product it was registered for. Still, the court decided that the trade mark hadn't been abandoned. It also found that keeping the trade mark registered was in the public's best interest and in Inntech’s interest.
If you require assistance in preparing your evidence of brand use to respond to an Examination report or pending non-use action please contact our trade mark attorneys to discuss in greater detail.
