Annex A1 - Information sheet for trade mark applicants

Date Published

HOW TO SUPPLY EVIDENCE OF HONEST CONCURRENT USE, PRIOR USE and/or OTHER CIRCUMSTANCES

Under sub-sections 44(3) and 44(4) of the Trade Marks Act 1995 and/or
regulation 4.15A of the Trade Marks Regulations 1995

What kinds of evidence can you supply under s44?

In my report I have explained some problems with your trade mark. You might be able to overcome these problems if you supply appropriate evidence. Evidence can be of:

  • HONEST CONCURRENT USE: The evidence must show that your trade mark was chosen honestly and was then used for a significant time concurrently with any conflicting trade mark. The use must have been in Australia, before you applied to register the trade mark. The use must also be of your trade mark as it is in your application, without any major changes.
  • PRIOR USE: The evidence must show that your trade mark was first used before the priority date of any conflicting trade mark and was then used continuously up to at least the time you applied to register the trade mark. The use must have been in Australia. The use must also be of your trade mark as it is in your application, without any major changes.
  • OTHER CIRCUMSTANCES: The evidence must give other relevant information justifying acceptance of the trade mark.

How much evidence will you need?

The amount of evidence you will need will depend on the kind of evidence, and on how serious the conflict is with other trade marks. If you believe you can supply evidence, and if you wish to discuss this, please phone me.

How must you supply the evidence?

Evidence must be supplied as a declaration and should be submitted in electronic format via eServices. Please follow the guidelines on file types and file sizes when submitting via eServices. Using eServices is both secure and convenient.  

The declaration must be from:

  • you, if you are the applicant; OR
  • a principal officer or other authorised employee of the company (e.g. a director) if the applicant is a company; OR
  • someone you have authorised to make the declaration on your behalf (e.g. a lawyer or trade mark attorney).

The declaration must:

  • 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
  • if the declaration is made on behalf of a company, state the name and address of the company and the position in the company 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 consecutively numbered paragraphs, confined to one subject where practicable; AND
  • state that the person making the declaration believes the declaration to be true and correct; AND
  • be signed by the person making the declaration.

The declaration form available via eServices incorporates the above points.

PLEASE NOTE: Providing clear digital images of any objects bearing the trade mark will be as effective as providing the objects themselves.

What information must the evidence contain?

The declaration must contain:

  • The name of the person or organisation using the trade mark:
  • you or your company; OR
  • someone authorised to use the trade mark; OR

  • a person or company from whom you acquired the trade mark (a predecessor in title).

It must also contain other important information, as follows.

Honest Concurrent Use

For honest concurrent use, the declaration should include:

A brief history of the trade mark, including:

  • When the trade mark was chosen (this must be a significant period of time before you applied to register your trade mark).
  • Why the trade mark was chosen.
  • Whether you knew of the earlier trade mark when you chose your trade mark.
  • Whether you know of any confusion between the trade marks.
  • When the trade mark was first used in Australia to sell goods or services (please give the year and, if possible, the month).
  • Whether it has been used continuously. If it has not been used continuously, when and for how long it has been used.
  • The area/s where the trade mark has been used to sell goods or services (please give States or regions in Australia).
  • The specific goods or services sold using the trade mark.
  • Examples of how the trade mark has been used to sell those goods or services (please refer to and attach digital images of packaging and/or advertising and/or promotional materials using eServices).
  • The annual figures in Australian dollars spent on advertising and promoting the trade mark.
  • The annual turnover figures in Australian dollars for goods or services sold using the trade mark. These figures must cover only the goods or services claimed in your application.
  • Any other information or materials which will help show how the trade mark has been used (please refer to and attach digital images of these materials using eServices).

PLEASE NOTE: It may be that you can show honest concurrent use on only some of the problem goods or services. In this case, please agree to delete the other problem goods or services.

Prior Use

For prior use, the declaration must state:

  • The year and if possible the month when the trade mark was first used in Australia to sell your goods or services.
  • Whether the trade mark was then used continuously to sell your goods or services, up to and including the priority date of your application. (Use must be continuous, and must be supported by documentation such as annual sales figures.)
  • How the trade mark was first used to sell your goods or services. Please provide examples such as advertising or packaging material. If these are unavailable, please explain how the trade mark was used. Unsupported statements such as “I first used this trade mark in 1990” are not sufficient.
  • The specific goods or services sold using the trade mark.

PLEASE NOTE: It may be that you can show prior use on only some of the problem goods or services. In this case, please agree to delete the other problem goods or services.

Other Circumstances

There may be other relevant circumstances which may allow your application to be accepted. For example:

  • If you have been using your trade mark with the permission of the owner of a conflicting trade mark.
  • If the owner of a conflicting trade mark agrees to your trade mark being registered, and gives you their written consent.

If you believe these or other circumstances apply, and if you wish to discuss how to proceed, please phone me.

Can you prepare the evidence yourself?

You may prepare and supply evidence of use yourself or a trade mark attorney would be able to assist you.

Will the information you supply be treated as confidential?

IP Australia will accept your declaration in confidence. IP Australia will not accept an accompanying letter in confidence.

Please do not put any information which you consider to be confidential into an accompanying letter.

Will the information you supply be given to anyone else?

Other people may request access to information you have provided. Please take into account that:

  • Letters become available for public inspection.
  • Declarations may be available for public inspection. Copies of declarations may also be requested under the Freedom of Information Act. If this occurs, IP Australia may seek your comments before any release of your declaration.

Will anyone else be told if your application is accepted?

If your trade mark is accepted for registration because of the evidence you have supplied, IP Australia will tell the owner/s of the conflicting trade mark/s that this has occurred. They will then have the option of opposing registration of your trade mark.

If registration of your trade mark was opposed, and if you wanted to continue with your application you would need to respond to the opposition. If your response was unsuccessful, registration of your trade mark might be refused.  In this case it would be likely that you would have to pay costs.

You can find detailed information about the opposition process in Part 51 of the Trade Marks Manual of Practice and Procedure, in the Resources section of the IP Australia website at www.ipaustralia.gov.au.