When grounds for rejection under s 41 have been raised and the Registrar remains satisfied (after considering any submissions or proposed amendments filed by the applicant) that the trade mark is not capable of distinguishing the applicant's goods and/or services, the trade mark owner may provide formal evidence of use. Requirements common to all evidence are set out in the following paragraphs.

Decisions made on the basis of evidence of use involve weighing up the evidence provided, and deciding whether this information, in combination with the trade mark's extent of inherent adaptation to distinguish, indicate that the Registrar cannot be satisfied that the trade mark should be rejected. Justice Branson in Blount Inc v The Registrar of Trade Marks [1998] FCA 440 (‘Oregon’) said:

Where the Act requires the registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfek v McElroy (1965) 112 CLR 517, 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

3.1 Who has used the trade mark?

Evidence of use is not always restricted to use by the current proprietor of a trade mark. The Act specifies that use of the trade mark includes use by a predecessor in title of the applicant (s 41) and use by an authorised user (s 8). It also includes use on goods or services for export (s 228).

Predecessor in title

The use of a trade mark by a predecessor in title will be treated differently depending on whether such use occurred when an application for registration was pending, or whether the trade mark was not subject to an application or registration at the time of use.

Where the trade mark was the subject of a pending application (or another registration) at the time the claimed use of the trade mark occurred, then the applicant needs to show that rights in the trade mark subject of the application were simply assigned to them. Such rights can be assigned without the underlying goodwill of the business (s 106).

If the applicant seeks to rely on use of the trade mark by a predecessor before an application for registration is filed, they must also demonstrate they are the successor in title to the associated goodwill of the business that used the trade mark. This reflects the common law rule that an unregistered trade mark cannot be assigned without the goodwill of the business that used it (Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65, [122]).

Authorised user

An applicant can rely on their evidence of use or use by an authorised user. Authorised use requires some form of actual control by the applicant over the use by the authorised user. This is discussed in more detail in Part 19A.6.

3.2 Evidence should be in a declaration

Formal evidence of use of the trade mark by the applicant, predecessor in title, and/or authorised user/s must be in declaratory form.

IP Australia’s role is to facilitate the registration of trade marks without imposing undue formalities requirements. The purpose of a declaration is to allow the Registrar to accept statements at face value unless there is some other information or reason why the Registrar considers that declaratory information may be inaccurate or misleading.

A declaration is intended to be evidence of fact. It is not appropriate that a declaration contain legal arguments or opinions on the law. However, it may be appropriate that a declarant express an opinion about a matter of fact. For example, it may be appropriate for a declarant to declare their belief that based on their experience or expertise, a particular term is not commonly used in an industry for descriptive purposes. Conversely, it would not be helpful for a declarant to include arguments citing case law that a trade mark is capable of distinguishing. Such arguments should be included in covering submissions.

Regulation 21.6 states that a declaration must be in an approved form. Declaration forms that are in the approved form are available on IP Australia’s website. As stated in the Official Journal of Trade Marks on 28 June 2012, to be in an approved form, the declaration should:

be headed with the title of the matter for which the declaration is made; and
be expressed in the first person; and
state the name and address of the person making the declaration; and
state the date on which the declaration is made; and
state the place at which the declaration is made; and
be divided into paragraphs, each of which should be numbered consecutively and as far as practicable, confined to one subject; and
be signed by the person making the declaration; and state that the person believes the declaration to be true and correct.

If the declaration is being made on behalf of a company or business, it should also:

state the office or position held by the person making the declaration; and
state the address of the place at which the business is conducted or principally conducted.

Declarations should substantially comply with the above requirements.

For a declaration to be considered substantially compliant it should:

be expressed in the first person; and
state the name and address of the person making the declaration; and
state the date on which, and the place at which, the declaration is made; and
be signed by the person making the declaration; and
state that the person believes the declaration to be true and correct or words to this effect.

For example, a declaration which was not headed with the title of the matter for which the declaration is made but included all of the other above requirements, would substantially comply.

The Registrar will also generally accept statutory declarations or affidavits in place of a declaration under the Trade Marks Act 1995.

For more information on the preparation of a declaration see Annex A1 of this part.

3.2.1 Exhibits must be incorporated in the declaration:

The declaration must annex any exhibits or appendices and should be submitted in electronic format via the online services page. If the exhibits or appendices are not annexed, they do not form part of the declaration. It is preferable that the annexes form a single electronic document together with the declaration.

Statements made in a declaration should ideally be supported by relevant annexes where possible. For example, if an applicant states the date of first use of a trade mark in the declaration, a relevant dated exhibit demonstrating the use significantly increases the weight that can be given to the applicant’s statement.

Declarations from an applicant’s legal counsel may need to be treated with caution. In Australian Institute of Management v The Australian Institute of Music Limited [2020] ATMO 23, Hearing Officer Smith said (of evidence provided by the Opponent’s attorney):

These very broad statements are not supported by any material attached to the Declaration, nor are they statements that I would expect the Deponent would have the direct personal knowledge to make. The Deponent does not provide any reference to notes or other materials that she has had access to that enable her to make these statements, nor does she identify in any way any individual with direct knowledge who has provided her with information enabling her to make these statements. In short, these statements amount to unsupported assertions that I would not expect a party’s representative to make, and have been discounted accordingly.

However, declarations from legal counsel may be more appropriate where the content relates to matters external to the applicant, e.g. the results of Internet or other research conducted by counsel.

3.2.2 Who may make the declaration:

The declaration is usually made by the applicant (if an individual), a senior officer, or an employee of the applicant company, but the Registrar will consider a declaration from anyone who declares themselves authorised to make it on behalf of the applicant. Generally, more weight is given to declarations made by persons in a position to have first-hand knowledge or direct access to records of a company that relate to the use of the trade mark.

3.2.3 Translations required:

If the declaration is not in English, it must be accompanied by a certified translation into English (Regulation 21.2).

3.3 When may evidence be submitted?

Evidence of use of the trade mark may be submitted:

prior to examination
in the course of examination
prior to a hearing.

3.3.1 When should an examiner suggest evidence of use?

Where evidence of use is likely to assist the trade mark owner in the prosecution of the application, examiners will suggest evidence as an option in the first examination report.

Evidence may be expensive and time-consuming for an applicant to prepare. If it is unlikely to allow acceptance of the particular trade mark, it should only be suggested if it is made clear that the amount of evidence needed may need to be very substantial. In cases where the examiner is aware that the trade mark has not been used or has had minimal use, then the submission of evidence should not be suggested.

3.3.2 Can an examiner require that evidence be submitted?

The Registrar may suggest evidence be filed, but it can never be required: the onus and initiative rest with the applicant. If the applicant declines to submit evidence of use, and the Registrar is satisfied that a ground for rejection exists, the examiner may need to consider rejecting the application if an impasse has been reached.

3.4 What information should an applicant supply?

The content of evidence of use will vary depending on the trade mark. Generally, the following information would be considered useful:

the trade mark number
the applicant's name and the declarant's name
the declarant’s position (if the applicant is a company) and whether they have access or personal knowledge of the relevant affairs of the company
when the trade mark was first used and the period of use (for intended use, see paragraph 4.3.1), with the relevant dates corroborated by illustrative representative examples of use annexed as exhibits
the goods/services in respect of which the trade mark has been used
annual turnover figures (in Australian dollars). Where a wide range of classes or very varied goods or services have been claimed, turnover should ideally be broken down to show figures for goods or services subject of the application . Alternatively, the applicant may be able to indicate the proportions of the designated goods or services which make up the total turnover
any advertising or promotional expenditure (in Australian dollars) associated with use of the trade mark
exhibits showing actual use of the trade mark, or digital photographs of the exhibits. These items should be dated, or an estimate of their date of use provided. Social media pages are often useful resources as they are generally dated, although caution must be exercised relying on profile or account pictures for social media.

The following information is also useful (this is not an exhaustive list):

indication of market share
individual item cost (this should be considered in the context of turnover figures. Inexpensive goods or services are likely to have a wider market and more competitors than expensive, specialised items)
indication of advertising types e.g. social media, SEO, other Internet use, television, radio, and print etc.
publications/articles mentioning the trade mark
indication of customer base (who are the applicant's major customers in Australia or overseas?)
indication of distributors (if the applicant sells their goods via a 3rd party, how much presence does the 3rd party have in the market place?)
references to Internet website/s where trade mark is used, together with analytic figures which assist in determining the number of visitors to the website from Australia since the date of first use (if possible, broken down periodically)
download figures for any relevant app used by the applicant that features the trade mark being used for the relevant goods and services
third party social media and/or SEO reports
declarations from persons of standing within the relevant trade;
consumer surveys and/or questionnaires.

3.5 Websites as evidence

Content on the internet is constantly changing. Consequently, web pages can have very short lifespans. This may pose difficulties for applicants where they are seeking to provide evidence of use of their trade mark on the internet from several months, or in some instances years, prior to the time they attempt to assemble their evidence.

In this situation, applicants may provide documentation from a web archiving service. Documentation of this nature typically gives a snapshot of what a particular web page looked like on a certain date. Where an applicant provides evidence of this sort (in the usual declaratory form) examiners should consider this prima facie evidence of the existence and appearance of the web page at the date indicated.

Evidence in the form of captures from the ‘Internet Archive Wayback Machine’ tool was considered acceptable in Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552 at [21] where Burley J said:

[The Wayback Machine] operates to capture and date the ephemera of the internet. I accept that the Wayback materials are likely to be a reliable indication of the content of the i-kon website at different points of time…

The Registrar’s policy is to accept evidence from Internet Archive Wayback Machine unless there is some reason to doubt its veracity.