When an application for the registration of a trade mark is filed in Australia, there is a presumption that the trade mark is in either in use or will be used during the course of trade to distinguish the claimed goods and/or services from those of other traders.

Evidence of use can be supplied during prosecution of an Australian trade mark application to overcome an objection that the applied-for trade mark is not capable of distinguishing the Applicant’s goods or services from the goods or services of other traders (s 41 objection), or to overcome a citation to show honest concurrent use (ss 44(3)) or prior continuous use (ss 44(4)) of the applied-for trade mark. To qualify as bona fide trade mark use, the use must be:

• as a trade mark;
• in the course of trade;
• use in Australia;
• on or in relation to the claimed goods and/or services; and
• by the trade mark owner, predecessor in title, or an authorised user.

An authorised user is defined under s 8 of the Trade Marks Act 1995 as a person that uses the trade mark in relation to goods or services under the control of the trade mark owner.

Type of Evidence

The evidence of use is supplied during prosecution in the form of a simple declaration executed by a person with knowledge of the use the mark. A foreign language declaration must be accompanied by a certified English translation.

The declaration includes a history of the trade mark as it relates to the specific goods in the application, plus actual exhibits to substantiate the use. At a minimum, the trade mark history should include:

• The date when the trade mark was first used to sell goods or services (year and, if possible, the month).
• The period of trade mark use.
• The area/s where the trade mark has been used (States or regions in Australia if the use has not been throughout Australia).
• The specific goods and/or services sold using the trade mark.
• Examples of how the trade mark has been used to sell those goods or services. Non-limiting examples include images of the product upon which the trade mark is applied, packaging material, marketing material, and invoices. Such items should ideally be dated, or alternatively an estimate of their date of use provided.
• The annual figures in Australian dollars spent on advertising and promoting the trade mark.
• The annual turnover figures in Australian dollars for the goods sold or services provided using the trade mark. In cases where a wide range of classes are claimed, the turnover figure should be broken down for goods or services of a similar nature.

The following other types of information may also be useful in supporting the trade mark application:

• indication of market share;
•  individual item cost;
• indication of advertising types e.g. television, print, Internet;
• publications/articles mentioning the trade mark;
• customer base;
• distributors;
• references to Internet website/s where trade mark is used;
• declarations from persons of standing within the relevant trade;
• consumer surveys and/or questionnaires;
• use from overseas may carry some weight if the use is within a market similar to the Australian market (eg. U.S., Canada, New Zealand, or United Kingdome), and the trade mark is the same. Overseas use on its own will not overcome an objection without use of the trade mark in Australia.

Historical evidence from a web archiving service such as the Wayback Machine internet archive is acceptable.

Intention to Use

Under certain circumstances, evidence of intended use may be provided if an Examiner considers that the applied-for trade mark is to some extent inherently adapted to distinguish. Evidence of intended use cannot be used to overcome a citation, or where the trade mark has no inherent adaption to distinguish the Applicant’s claimed goods and/or services from those of other traders. Evidence of intended use must particularise the Applicant’s commercial plans and include evidence such as pre-launch market research and market estimates, product launch plans, and information about advertising and sales plans, although without limitation thereto. An Examiner will need to be satisfied that the applied-for trade mark will be capable of distinguishing when use in commerce commences.

Criteria for assessing Honest Concurrent Use

The following criteria are considered by an Examiner when examining evidence of honest concurrent use:

• the degree of confusion likely between the trade marks in question;
• whether instances of confusion have in fact occurred;
• the honesty or otherwise of the concurrent use. Reasons for adopting the mark should be provided;
• the extent of use in duration, area and volume; and
• the relative inconvenience that would be caused to the respective parties if the applicant’s trade mark were registered or not registered.

Relevant date of use

The relevant date of use is dependent on the grounds of objection raised by the Examiner.

If the ground of objection relates to distinctiveness of the applied-for trade mark, trade mark use should be prior to the filing date of the applied-for trade mark, although use after the filing date may be considered acceptable. As set out above, evidence of intended use may also be provided.

Evidence of honest concurrent use must show use of the trade mark in Australia before the priority date of the applied-for trade mark. Evidence of use after the priority date of the subject application is irrelevant and will not be considered.

To show prior continuous use, the date of first use must be prior to the priority date of the earliest cited trade mark and the use must be continuous until the filing date of the applied-for trade mark.

How much evidence is enough?

There are no statutorily defined rules regarding the quantum of evidence required to overcome a ground of objection. Based on the evidence, the Examiner must be satisfied to allow the application on a balance of probabilities.

As a general statement, there is a linear relationship between the amount of evidence required and the prima facie concerns regarding distinctiveness of the mark or other concerns of the Examiner. The nature of the commercial market for the goods and/or services may also be determinative. For example, the criteria for low cost/high turnover goods will likely differ to high cost/low turnover goods purchased by sophisticated consumers.

Although the authorities may expound that no one factor outweighs the other in consideration of the evidence, annual turnover and advertising expenditure are typically important to an Examiner. Substantial annual turnover figures may negate relatively short use of the trade mark. In other circumstances, a significant period of use may compensate for limited turnover. Nevertheless, the totality of evidence will be considered.