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What kind of evidence is needed to overcome a distinctiveness objection?

Once a trade mark application is filed it needs to be examined by IP Australia, and during examination, this sometimes leads to the examiner raising an objection that the trade mark is not sufficiently, inherently distinctive in relation to the goods or services that you’re claiming. This is because, by definition, a trade mark is a sign that you are using or intend to use that can distinguish your goods/services from the similar goods/services of other traders.

In other words, what the examiner is saying with this sort of objection is that the trademark that you’ve chosen, the word or the phrase for example, is one that the examiner believes other traders are likely to need to use in relation to their own goods or services. This may be because the name or the phrase chosen describes the actual product or service or may describe the purpose, effect or quality or other characteristic of the goods or services.

For example, think of the word SOFT if applied to a laundry detergent product. This is essentially describing the effect that it has on the clothes, it makes then soft. Another example could be ‘Easy’ in connection with accounting services, or ‘Tasty’ for food.

This issue may arise also when using common terms such as Fantastic, Wonderful and similar. Combining these terms with a common word (for example, Fantastic Furniture) will likely see a distinctiveness objection. Whatever the reason for the objection, if you wish to overcome it, you might be able to do so if you can provide evidence that you’ve used your trade mark as a trade mark in relation to your goods or services to a sufficient extent. And the particular extent of use required in terms of evidence depends on the nature of the objection. So if the objection is that your mark is to some degree distinctive, but not sufficiently so; that it has some inherent distinctiveness it’s not totally descriptive or totally commonplace, then you don’t need to provide as much evidence. The bar isn’t quite as high. The evidence simply needs to show that your trade mark will at some point come to distinguish your goods or services, even if it hasn’t yet done so.

On the other hand, you can see an objection that your trademark has no inherent distinctiveness-  that is completely descriptive. These objections are extremely difficult to overcome and sometimes it will be impossible to overcome this issue. An example of that would be filing an application for a trademark Real Estate for real estate agency services. This totally descriptive and you couldn’t address that. Even realestate.com.au for real estate portal services as a plain word was considered completely lacking in distinctiveness initially but by virtue of the extent of use made of the name ‘realestate.com.au’ the owner was able to show that the term distinguished its services from the similar services of others.

In a case where the objection suggests the trade mark is totally descriptive, you need to provide extensive evidence showing use and promotion of the trademark over a very lengthy period of time, often over 10 years. But it really does depend on the extent of use that’s occurred. And it has to show that your trade mark in fact distinguished your goods or services on the date that you filed the application. Essentially to show that your trade mark is known and understood to be your trade mark and not a descriptive term and that’s quite a high bar.

So the kinds of evidence that will help to show that a trade mark is adapted to distinguish or will be capable of distinguishing can include use of the trade mark in different media or in contexts. You will need to provide a declaration and attach the evidence. And some examples of the kinds of evidence that are commonly used to overcome these objections are images of your actual goods, if you’re selling goods and any packaging, if they show the trade mark. Screenshots from a website and that’s particularly helpful if you can find archive screenshots. There’s a service on the internet called the Wayback Machine that’s really helpful to show screenshots from your website that have been taken in the past, as this helps show that you have used the trade mark over a certain period of time. Social media advertising can be helpful because you can show posts and the date the posts were made. Collateral, like your letterheads, branded letterheads and digital sign offs and stationary, catalogues, brochures and pamphlets.

Consider third party promotion. Whether that’s in a printed magazine or a newspaper or even a digital application. There’s a lot of magazines and publications that are published on line these days. Outdoor advertising, like billboards, public transport advertising, scripts of advertising that is broadcast on the radio. Television advertising. Promotional items – if you give away promotional items that have your trad emark on them, you can provide images of those to show use of the trade mark. And, of course, copies of letters and dated invoices that you’ve sent to customers that show the trade mark. That’s probably one of the best forms of evidence because it shows use of the trademark in relation to the sale of the particular goods or services and it’s dated. Dated evidence is often the strongest evidence that you can provide to support an application when there’s been an objection.

It’s also important to provide sales figures and marketing figures that relate specifically to the particular goods or services under the trade mark you’ve applied for. We try to break them down by year so you might want to get a table that gives the amount of revenue and marketing expenditure for each year or even on a monthly basis if it’s a short period of time.

In some cases (and particularly if you face an objection that suggests the trade mark is entirely descriptive), it can be helpful to give declarations from independent traders. So other members of the trade that you’re in, who can attest to your business’s use of the trade mark and that it’s exclusive to your business. That can be particularly helpful if you’ve been using it for not a very long period of time or alternatively, if you are selling specialised goods or services. It can be really helpful to have other members, independent third parties who are involved in the trade, vouch for your business and attest to the fact that the trade mark that you use distinguishes your business and is not just a descriptive term.

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