Preparing an Evidence of Use Report

In certain cases, providing evidence of use of a trade mark can help overcome objections raised during prosecution of a trade mark. Evidence of Use is documentation 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. Eligibility 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, 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 Australia before 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 how the trade mark was used. 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 Australian Char Pty Ltd v The Kingsford Products Company LLC, the use of AU TM 492977 or MATCHLITE was in question. Australian Char Pty Ltd did not demonstrate the use of the registered trade mark nor show an intention to use the trade mark. The trade mark had been in use from 1988 until 2006 when the local factory closed. From 2013 to 2016, Australian Char Pty Ltd worked to re-establish the MATCHLITE line, but the evidence provided was found to be insufficient. The Hearing Officer was unable to give any weight to their statement, and it was determined that the trade mark be removed from all goods and services under the registration, like manufacturing and selling barbeque briquette.

In Inntech Pty Ltd v Pointpal Holdings Pty Ltd, Inntech opposed a non-use application filed by Pointpal against a logo containing a stylised version of the words "pico life". The trade mark was used on Inntech Pty Ltd's website in respect of various products promoted and sold by Inntech in Australia during the relevant period. There was evidence of use of the trade mark during the relevant period, but no evidence of use of the mark in respect to the full range of goods for which it was registered was provided. It was determined that the trade mark was not abandoned, and the evidence demonstrated that it was in both, public interest and in the opponent's interest (Inntech) that the trade mark remain registered for all of the goods within the specification.

If you need assistance in preparing evidence of use to respond to an Examination report please contact our trade mark attorneys to discuss.

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