Get it Right – Filing Evidence of Use | Sarah Dixon

In a recent decision by IP Australia, our Firm was successful in opposing an application for the following mark:

Trademark_GE

The Hearing Officer found that there was little doubt that Galvin Engineering Pty Ltd’s  trade mark was deceptively similar to General Electric Company’s GE trade mark.

An interesting aspect of this case is that it highlights the need for filing comprehensive and cogent evidence to support claims that the trade mark in question has been used at and over a certain period of time.

There is suggestion that because a statement or remark is made in the form of a statutory declaration, then that itself should be taken as fact and as evidence as to what the statement is referring to. However, it has become evident that when it comes to establishing use of a trade mark, IP Australia requires much more.

With this in mind, the type of evidence that a trade mark Applicant should strive to file includes:

  1. Dated evidence – Often an Applicant is able to provide evidence in the form of undated packaging, tags, labels and so on. While this certainly shows that the trade mark is in use, it does not prove when the trade mark was first used or even if the trade mark is used and available to the public. Rather, dated invoices, order forms, shipping documents, dated magazine articles or advertisements are more useful. These dated documents can then be accompanied by the undated evidence discussed above to provide the Registrar with a well-rounded picture of the use of the trade mark Australia.

Further, it is important to consider the relevant date. Often in the case of trade marks, the evidence prior to a certain date is relevant and evidence after that date is not. While the Registrar may take the ‘post-dated’ evidence into account to gain an understanding of the circumstances surrounding a particular case, it will not be determinative. Therefore, filing voluminous evidence with an irrelevant date will often prove fruitless.

  1. Evidence which shows use of the trade mark in relation to the relevant goods and services – In the case of trade marks, a trade mark application is filed in relation to certain goods or services. Depending on the reason for filing the evidence, it will be important to file evidence which shows use of the trade mark in relation to the or some of the goods and/or services covered by the Application or at least some of these goals and/or services. Filing evidence in relation to unrelated goods and/or services will usually not assist.
  2. The evidence needs to show use by the Applicant, the Applicant’s predecessor in title or a related entity for example a licensee – The evidence of use filed will ideally show the Applicant as the user of the trade mark. If this is not the case, evidence needs to be filed showing the relationship between the Applicant and the person or entity who is using the trade mark. This is often the case when a foreign entity has a registered trade mark which is distributed in Australia by a local distributor.
  3. The evidence needs to be clear – evidence should clearly explain the history and ‘story’ behind the trade mark to the Registrar. The easier it is for the Registrar to make sense of the evidence, the more likely the evidence filed will produce a favourable outcome.
  4. Statements in the declaration should, where possible, be supported with documents proving the statement. Without proof, there is no way for the Registrar to test any uncertainty or objections raised by the opposing side (in the case of an opposition).
  5. The evidence of use filed should largely be evidence of use of the trade mark in Australia. The Registrar will consider use in other jurisdictions but this type of evidence will usually  carry little weight.

Each case will of course differ in terms of the volume and type of evidence required. However, if the key points outlined above are kept in mind, the evidence submitted is more likely to produce a favourable outcome.

Sarah Dixon

If you would like any further information regarding filing evidence of use in trade mark matters in Australia, please contact Sarah Dixon at sdixon@chrysiliouip.com.au or Protect@ChrysiliouIP.com.au