23.4. Examining evidence - general

Once an applicant has provided evidence of use, the examiner needs to assess it, and make the decision whether or not it is sufficient to satisfy the Registrar that the trade mark does or will distinguish the applicant's goods and/or services in the marketplace.  The combined effect of use or intended use, the nature of the trade mark itself, and any other circumstances, may be sufficient to accomplish this purpose.

The following paragraphs give some guidance on particular issues to be conscious of when assessing evidence.  Most of the comments are relevant to evidence irrespective of which subsection the ground for rejection is in relation to. However, there are some specific comments pertinent to trade marks with no inherent adaptation to distinguish which are set out in paragraph 5.

4.1  How much turnover does an applicant need to have?

The greater the turnover, the more likely it is that the trade mark is capable of distinguishing the applicant's designated goods or services. Massive turnover may compensate for short use, likewise, long use may compensate for small turnover, especially in relation to trade marks with some inherent adaptation to distinguish.  However, total turnover must be considered in the context of the relevant market and balanced against unit cost before a decision can be made on this issue.  Applicants should be encouraged to supply information on unit costs and perhaps market share to help support their case.

As a general comment, it is necessary to balance the amount of inherent adaptation the trade mark has with the strength of the evidence provided.  For example, a trade mark consisting of the surname KINGSTON (SFAS 1798) will need much less evidence of use than will one consisting of the surname KING (SFAS 24870) when used for the same, fairly commonplace goods or services. Similarly, if a surname is to be used on very specialised and unusual goods, such as magnetic resonance imaging scanners (MRI scanners), the amount of evidence required will not be as great as what would be required for cheap, mass marketed t-shirts.

4.2  What length of use is enough?

The longer a trade mark has been in use, the more likely it is to be capable of distinguishing the applicant's designated goods or services. The length of time likely to support an application very much depends on the degree of inherent adaptation the trade mark has. The mere fact a trade mark has been used in the trade does not mean it is capable of distinguishing or is likely to become so.

For example, a canned food producer might use the words 'Baked Beans' on their labels for a long period of time. If the buying public sees these words as the description of the contents of the can, they do not demonstrate trade mark use by the trader concerned regardless of the length of use. The length of time therefore, is only one factor which the examiner must consider in making their ultimate decision.

4.3  When should the use have taken place?

In most cases, there is an expectation that the trade mark was used before the application was filed. However, if the application is to some extent inherently adapted to distinguish, use after the filing date is also acceptable.  If the use has not been continuous, the capability of the trade mark to designate a trade source may have been diminished.  An indication that the use has been continuous, or if that is not the case, information describing the actual periods of use, should be included in the declaration.

4.3.1  Evidence of intended use

The examiner may also consider evidence of intended use if the application is to some extent inherently adapted to distinguish.  Such evidence would need to give a very good picture of the applicant's commercial plans.  A mere indication that use is intended will not be sufficient.  The applicant would need to provide, for example, pre-launch market research and market estimates, product launch plans, and information about advertising and sales plans.  Sufficient information needs to be provided to satisfy the examiner that the trade mark will be capable of distinguishing when use in the marketplace commences.
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4.4  Does the applicant have to show use in all States?

The greater the demonstrated geographical extent of the use, the more likely it is that the trade mark will distinguish the applicant's designated goods or services throughout Australia.

If it is clear from the evidence that the use has only been in a relatively small geographical area, the application may be accepted with a geographical limitation. However, in the great majority of cases, if it is shown that a trade mark is capable of distinguishing the applicant’s goods and/or services in one state, then this will be sufficient to show that capacity nationally.  Geographical limitations should be the exception, rather than the rule.

In the past, services were more likely to be localised than goods, and quite localised use would allow acceptance of a trade mark for services, perhaps limited to a particular state. However, with the growth of franchising as a method of business organisation and development, and with technological changes (such as electronic communications and the Internet) which overcome barriers of distance, many services are becoming national or international in market access. This should be taken into account in assessing evidence.

Note:  A geographical limitation is entered onto the Register as an endorsement. The form of the endorsement is:

Registration of this trade mark is limited to the State of <  >.

4.5  Can the applicant rely on use from overseas?

Overseas use may be taken into account in assessing evidence regarding trade marks which are to some extent inherently adapted to distinguish, if the use is within a market similar to the Australian market, and the trade mark concerned is the same.  Use, for example, in the United States of America, Canada, New Zealand or Great Britain may carry some weight. Whilst such overseas use may support an applicant’s case, on its own it is unlikely that it would be a sufficient basis upon which to accept an application.  Use in an obscure Asian or South American marketplace will not be as persuasive (Burger King Corporation v. Registrar of Trade Marks [1973] HCA 15[6] ('Whopper')).

Note:  Refer to para 5.3 for acceptable use when the trade mark is not to any extent inherently adapted to distinguish.

4.6  What if the evidence does not cover all the goods/services claimed?

For trade marks which are to some extent inherently adapted to distinguish, there is no requirement for the application to be restricted only to those goods/services demonstrated in the evidence.  The legislative requirement is for the trade mark to be capable of distinguishing, not that it demonstrate it is already distinctive.

The evidence needs to be scrutinised to determine whether it supports a capacity to distinguish for a broad range of goods, or only something narrower.  For example, evidence demonstrating use on children's pyjamas and underwear in class 25, may support a capability to distinguish on a broader range of related goods, such as children's clothing; clothing for pre-teens and teens.  The same evidence, however, may not support the applicant for a diverse range of goods and services, such as vehicles, tools, travel and restaurant services etc.  If the evidence does not support the applicant's complete claim, the examiner should suggest the specification be restricted to include only the range of goods/services for which the mark is demonstrated to be capable of distinguishing and to which the grounds for rejection do not pertain.

4.7  What if the trade mark shown in the evidence is not identical to the trade mark on the application form?

Differences between the representation of the trade mark applied for and the trade mark as used should be noted. If the differences do not substantially affect the identity of the trade mark, they may be ignored (section 7(1)). Differences in script, colour or the pattern on a background, for example, may be ignored if they only serve to enhance the trade mark, and not change its basic identity.

4.7.1  Should the trade mark be amended to conform with demonstrated use?

If the differences between the trade mark as applied for and as used do not affect its identity, there is no requirement for the application to be amended to conform with the use shown in the evidence.  This may also not be possible under section 65 (see Part 9).

4.7.2  Limitation to colour

Some trade mark applications are submitted in black and white, but evidence of use often demonstrates use in colour.  In most cases, this is not important.  However, if it is obvious from the evidence supplied that the trade mark is only capable of distinguishing in particular colours, then a limitation to those colours should be requested.  The limitation is made by way of an endorsement specifying the colours concerned.   The usual format for the endorsement is as follows:

The trade mark registration is limited to the colours ____________, ________ and _________ as shown on the representation of the trade mark attached to the application form.  
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4.8  What if the trade mark is always used alongside another trade mark?

Sometimes evidence clearly shows that the trade mark applied for is not used solus, but always in combination with another trade mark or with a device.  This is not an uncommon occurrence.  It is standard practice within many trades to use more than one trade mark on a single label.  Customers also expect to be exposed to multiple trade marks on labels and advertising material. For example, multiple trade marks are almost the norm for canned and packaged foods (e.g. Campbell's® Velish® soups), motor vehicles (e.g. Holden® Commodore® sedans and wagons), and children's toys (e.g. Mattel® Barbie® dolls and accessories).  Evidence for these cases is sometimes difficult to assess, as the decision on the trade mark is affected by the presence of the other material in the evidence.

The question to be answered is always whether the trade mark under examination is capable, in its own right, of distinguishing the applicant's goods or services from those of other traders in the market.  If we accept that consumers expect to see multiple trade marks on packaging, the mere fact of use with another device or trade mark should not automatically go against the applicant.  But neither should the simple submission of evidence give an automatic right to acceptance.  

An important consideration for these kinds of trade marks is the context of the use demonstrated.  Two words side by side could be seen as two distinctive trade marks - one clearly designating the trade source of the goods, and the other the particular group of items within that trader's range.  However, they also could be seen as an indicator of trade source, and a descriptive epithet describing some attribute of the goods or services.

If the context of the use demonstrates the trade mark is always used descriptively, even a very large amount of evidence of use is unlikely to support the applicant's case.  The evidence must be carefully considered to decide whether it does support each mark as a trade mark in its own right.

In Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 [40]-[41] ('Cranberry Classic'), Wilcox J discussed this type of circumstance, pointing to the lack of support for the application trade mark in the evidence supplied:   

[I] am unable to find that the words CRANBERRY CLASSIC have hitherto been used as a trade mark. In para 19 above I quoted the definition of "trade mark" set out in s17 of the Act: relevantly "a sign used ... to distinguish goods ... provided in the course of trade by a person from goods ... provided by any other person". ....  [The] common thread is that the mark must be intended to proclaim a connection with a particular trader.

 In the present case, the evidence does not establish that the words CRANBERRY CLASSIC had ... acquired a discernible connection with Ocean Spray. No witness gave evidence that the words CRANBERRY CLASSIC signified to him or her an association between the product and Ocean Spray. ... Ocean Spray had spent a considerable amount of money on the promotion of its range of drinks, including cranberry classic, but the range had been promoted under the name "Ocean Spray". Given that fact, and the invariable presence on the label of the "Ocean Spray" trade mark, it seems to me likely that any association, in the public mind, between this product and the applicant company would have been derived from the use of the words "Ocean Spray" in advertising and on the labels of the products, not from the use of the words CRANBERRY CLASSIC. This impression is strengthened by the circumstance that the words CRANBERRY CLASSIC are displayed on the labels of that product in a manner similar to the words, admittedly purely descriptive, that identify the other drinks in the range.

4.9  Evidence of use in relation to tobacco products

The Tobacco Plain Packaging Act 2011 (TPP Act) came into effect on 1 December 2012 and restricts the way trade marks are used in relation to tobacco products in Australia. For example, cigarette packaging must be a generic drab dark brown and cannot feature logos, stylisation, embossing, decorative features or any other embellishments.

The TPP Act may affect how an applicant is able to demonstrate use of a trade mark in relation to tobacco products. The following points may be helpful when assessing evidence of use for a period on or after 1 December 2012:

• Stylised trade marks were permitted on tobacco products in Australia prior to the commencement of the TPP Act (1 December 2012).
• Tobacco products produced in Australia can be exported in packaging featuring stylised trade marks. Such use can be taken into account when assessing evidence for the purposes of section 41(5) or 41(4) for applications with a filing date on or after 15 April 2013.
• Whilst the TPP Act restricts the use of trade marks in Australia in a retail context, there may be exposure of the trade mark in Australia via the internet.
• Where evidence of use of the trade mark in Australia ceases at 1 December 2012, the applicant should provide a statement, in declaratory form, stating that the discontinuation of use is due to the TPP Act.​​​​​​​