23.3. Evidence of use - general requirements

When grounds for rejection under section 41 apply to a trade mark, and amendments, submissions in rebuttal or informal information are insufficient to satisfy the Registrar that the trade mark is capable of distinguishing the applicant's goods and/or services, the trade mark owner may provide formal evidence of use to support the application.  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 amount of inherent adaptation to distinguish, is enough to satisfy the Registrar that the trade mark should be accepted. Justice Branson in Blount Inc v The Registrar of Trade Marks [1998] FCA 440 (‘Oregon’) referred to the process as follows:

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?

Trade mark rights accrue with the use of the trade mark in the relevant marketplace. Not all traders apply for their trade mark at the time they commence trading, and an application may not be made until after a business is purchased by a person more conscious of the rights afforded by trade mark registration.  Evidence of use therefore is not always restricted to the current proprietor of a trade mark. The legislation refers to what is acceptable as use, specifying that use of the trade mark includes use by a predecessor in title of the applicant (section 41) and use by an authorised user (section 8). It also includes use on goods or services for export (section 228).

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.

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 must, at a minimum:

• 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.

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.

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 incorporate any exhibits or appendices and should be submitted in electronic format via the online services page. If the exhibits or appendices are not incorporated, they do not form part of the declaration.

3.2.2  Who may make the declaration:

The declaration is usually made by the applicant (if an individual) or a principal officer of the applicant company, but the Registrar will accept a declaration from anyone who declares themselves authorised to make it on behalf of the applicant.

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, or

• as part of hearing procedures.

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 would 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 needs that additional information in order to be satisfied the trade mark is capable of distinguishing, the examiner may need to consider rejection.

3.4  What information should an applicant supply?

Applicants should be advised to include the following in their evidence of use:

• the trade mark number

• the applicant's name and the declarant's name

• when the trade mark was first used and the period of use (for intended use, see paragraph 4.3.1)

• 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 also be broken down to show figures for goods or services of a similar nature. Alternatively the applicant may be able to indicate the proportions of the designated goods or services which make up the total turnover.

• advertising expenditure (in Australian dollars)  

• 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.

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. television, radio, print, Internet

• 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

• declarations from persons of standing within the relevant trade

• consumer surveys and/or questionnaires

3.5  Type of 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 variety (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.

This approach is supported by the decision of the Hearing Officer in CSL Limited v Capital Securitisation (Holdings) Pty Limited [2010] ATMO 42, [15] where evidence was submitted from the web archiving service ‘Wayback Machine’:

[W]here the Wayback Machine reveals a document, I accept that it is prima facie evidence (though rebuttable) as to the existence of that document and the veracity of what it contains (including the date of same).