27.5. Filing evidence of honest concurrent use, prior use or other circumstances

It may be possible for the applicant to overcome a citation by filing evidence of use or other circumstances which would allow the application to proceed under s 44(3) or 44(4) of the Act. This is dealt with in Part 28 of this Manual.

• Part 28 Honest Concurrent Use, Prior Use or Other Circumstances

The Tobacco Plain Packaging Act 2011 (TPP Act) came into effect on 1 December 2012 and may affect how an applicant is able to demonstrate use of a trade mark in relation to tobacco products. Further information about evidence of use in relation to tobacco products can be found in Part 23 of this Manual.

• Part 23 Overcoming Grounds for Rejection Under Section 41 – 4.9 Evidence of Use in Relation to Tobacco Products

5.1  Evidence must 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 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 that 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.

 

5.1.2  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. Providing clear digital images of any objects bearing the trade mark will be as effective as providing the objects themselves. Please follow the guidelines on file types and file sizes when submitting via the online services page.

If the exhibits or appendices are not incorporated, they do not form part of the declaration.

• For more information on the preparation of a declaration see Part 28 - Annex A1.

5.1.3  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 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.

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:

[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).

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