Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013

Date Published

HOW TO SUPPLY EVIDENCE OF USE OF A TRADE MARK

Under subsection 41(3) of the Trade Marks Act 1995

What is “evidence of use”?

In my report I have explained some major problems with your trade mark. You might be able to overcome these problems if you supply comprehensive and extremely convincing evidence of use.

“Evidence of use” under subsection 41(3) is information which shows that your trade mark has become overwhelmingly identified with your own particular goods or services. This will be because of the extremely substantial extent to which you have used the trade mark in relation to your goods or services.

PLEASE NOTE: The use must have been in Australia before you applied to register the trade mark. The evidence must show the trade mark as it is shown in your application, without any major changes.

How much evidence will you need?

The problems with your application are major ones. Any evidence you supply must therefore be very extensive, and:

  • Cover a significant number of years.
  • Give details of extremely substantial sales and advertising figures over the great majority of that period.
  • Include comprehensive examples of the trade mark in use over that period. The examples should be in electronic format and submitted via eServices.

If you believe you can supply significant 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).

The declaration must also contain the following information relating to the specific goods or services in the application:

  • A history of the trade mark, including:
  • The date when the trade mark was first used to sell goods or services (please give the year and, if possible, the month).

  • The area/s where the trade mark has been used (please give States or regions in Australia if the use has not been throughout 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 the goods or services sold using the trade mark.

  • 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).

  • For any non-traditional trade mark such as a shape, sound, colour, scent, or aspect of packaging, the information must also clearly demonstrate:

  • That it is used and promoted as a trade mark, AND

  • That it is recognised by consumers as a trade mark and is not seen merely as a functional or decorative feature.

PLEASE NOTE: If you can show use of your trade mark on only some of the goods or services in your application, please agree to limit your application to cover only those goods or services.

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.