Part 28. Annex A1 - Information sheet for trade mark applicants

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 used honestly. 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.

Evidence must be supplied in the form of a declaration and should be submitted in electronic format via the Online Services page. Please follow the guidelines on file types and file sizes when submitting via the Online Services page. Using the Online Services page 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 Online Services 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.

The evidence will need to show use of the trade mark:

• as a trade mark (see Part 19A.2)

• in the course of trade (see Part 19A.3)

• in Australia (see Part 19A.4)

• in relation to the goods or services claimed (see Part 19A.5)

• by the applicant, a predecessor in title, or an authorised user (see Part 19A.6)

• without additions or alterations substantially impacting the identity of the trade mark (see Part 19A.7)

For a more detailed explanation of the requirements above, access the parts of the Trade Marks Office Manual of Practice and Procedure referred to in the brackets.
 

For honest concurrent use, the declaration should include:

A brief history of the trade mark, including:

• When the trade mark was chosen.

• Why the trade mark was chosen.

• Were any enquiries made prior to commencing use of the mark and if so, what were they. (e.g. Did you check if a similar trade mark was already in use in respect of similar goods and services via a search engine or by checking Australian Trade Mark Search and other similar databases)

• If you did not make any enquiries, why not.

• Whether you knew of the earlier trade mark when you chose your trade mark.

• If you were aware of the earlier trade mark, why you proceeded with use of the 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 the Online Services page).

• 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 be in relation to 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 the Online Services page).

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.

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.

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.

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.

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.

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.