How Do I Prepare Evidence to Address an Adverse Examination Report?

There are several reasons why you might need to provide evidence to overcome issues that are raised in an examiner’s report. The reason you’re needing to provide that evidence may alter the way in which you go about it. Irrespective of the reason, it does need to be in the proper form for filing with the government body, which is IP Australia. That means it needs to be a declaration. It needs to attach relevant and appropriately formatted evidence that demonstrates use of your trade mark in relation to the particular goods or services that you’re claiming. If you’ve received an adverse report from IP Australia during examination of your application, the report might suggest that evidence of use is a way to overcome the issue raised.

Your declaration should attach evidence of how the trade mark has been used. It should be dated evidence, if available. That could include online advertising, or printed advertising, social media promotions, images of packaging bearing the trade mark, if you sell products. Signage, if you have a physical presence such as doctors’ offices, that sort of thing, and so on. In most cases it is useful to include information about turnover derived from the products or services sold under the trade mark as well as amounts spent in advertising and promoting the trade mark for those goods/services. Certain information may be confidential, such as financial figures, and should be labelled accordingly. Your attached evidence (or annexures/exhibits) should be properly labelled and be referred to appropriately in your declaration.

When Am I Likely to Have to Provide Evidence in Response to an Examiner’s Report?

A common objection that we see in our practice is one raised under section 41 of the Trade Marks Act 1995, which basically means that the examiner considers that your mark is not capable of distinguishing your goods or services from the similar goods or services of other traders. For example, your trade mark might be too descriptive for the particular goods or services that you claim, or it may simply be common in the trade. An example of that is an acronym that has a known meaning within your trade or a phrase such as ‘Melbourne’s Best Hairdressers’ because others in your field may have genuine need or wish to use the same and similar trade marks. In any event, you may need to provide evidence to overcome that kind of objection.

There are two levels of objection under section 41 and the type you receive will dictate the type and extent of evidence required. For example, subsection 41(4) is basically saying that your mark has been found to be to some level capable of distinguishing but not completely so. In this case your evidence needs to show that you’ve used and promoted your trade mark in the marketplace to a sufficient extent to show me that your mark does or that it will come to distinguish your goods and services. So even if it doesn’t now, that the evidence will need to show that it will be capable of doing so. This objection allows you to also provide evidence of your intention to use your trade mark, so not just of actual use but of an intention to use, such as business plans. They can show the way in which you intend to promote and use your trade mark. And as such, they might be sufficient to show that your trade mark will become capable of distinguishing. In this case, you would give a declaration setting out the history as to when and where and how you’ve used your trademark, if you have, alternatively how you intend to use it for your goods and services, as well as figures such as revenue figures and marketing expenditure that are relevant to the specific goods and services that bear your trade mark.

The other objection you might see under this section is subsection 41(3). This is to say your trade mark is in no way capable of distinguishing your goods – usually because it is entirely descriptive. The evidence you need to provide here needs to meet a much higher benchmark to be approved. It needs to show that at the date of filing your application the trade mark did indeed factually distinguish your goods or services from the similar activities of others.

Another common objection that we see is raised under section 44 of the Trade Marks Act, and that is basically saying the examiner considers your mark is too closely resembling an earlier filed trade mark (or one or more earlier filed trade marks) that claim similar or related goods or services.

If a section 44 objection has been raised, then the evidence has to be evidence that shows use of your trade mark prior to the date you filed your application. So the examiner won’t consider your use of your trade mark from after the day you filed your application. So even if you’ve got an examiner’s report that issued six month after you filed your application, you can’t then file evidence showing you’ve used your trademark in those six intervening months because it won’t be considered relevant in relation to this kind of objection. So likewise, you can’t rely on your intention to use your trade mark as a way forward if an objection has been raised under section 44 because of a prior conflicting mark.

The two main ways of addressing these section 44 objections due to prior marks are evidence of prior use and evidence of honest concurrent use. So if you want to demonstrate prior continuous use, then what you need to show is that you’ve used your trade mark starting on a date that is earlier than the date of the prior conflicting mark. So say the prior conflicting mark was on the register five years ago. Well, if you’ve been using your trade mark for 10 years and you’ve been using it continuously for the relevant goods and/or services, then you would be relying on evidence of prior continuous use to show that you’ve been basically in the marketplace for longer than the prior registered mark. You just didn’t register your mark sooner.

In that case, your declaration should show when and how you first used your mark. And it’s very important to show that first use of mark in relation to your goods and services. And it’s also important to show that you’ve been using it continuously. So you show evidence that’s dated for every year from the first use up until the time that you filed your application. That’s what would be sufficient to show prior continuous use. If you demonstrate yourself to be a prior continuous user then the examiner must withdraw the objection that has been raised.

Honest concurrent use is the other kind of evidence to overcome a section 44 objection. That is where you commenced using your trade mark after the filing date of the prior cited mark. So say, again, the prior cited mark was five years prior to your filing of your application, but you only commenced using your trade mark say three years prior to filing your application, then you would need to rely on honest concurrent use, if indeed that is what you can show. So if you want to rely on this exception, then you need to show how and why you selected the mark. So it’s really important to explain why you selected the trade mark you did, and to demonstrate that your choice and your use of your mark has been honest.

When we say honest, in this context, what we mean is that you need to confirm whether or not you were aware of any other similar trade marks, and whether or not there has been any confusion between your brand and any other brands in the marketplace. You should also explain, if you were aware of the prior mark, why you continued with your choice of a similar brand. This will speak as to your honesty in adopting a mark that is similar to another mark that was already in existence when you adopted it. So what you want to demonstrate is that you’ve used your trademark in the marketplace concurrently with the existence of that other conflicting mark for a sufficient length of time and/or to a sufficient degree, and such that it’s likely that the marks can coexist. And in that context, you might also want to mention whether or not there’s been confusion, because if there has not been confusion and you’ve been coexisting in the marketplace for a number of years, that tends to indicate that the marks can continue to coexist. And that’s why it’s called honest concurrent use.

It’s important to note, in these cases, that there’s no set rules as to the duration of use, or the amount of money that you’ve made in terms of revenue, or the amount of money you’ve spent on marketing that would be sufficient, because it really depends on the specific circumstances of the case and also just how similar your mark is to the earlier filed trade mark. So the examiner would certainly have regard to how long the cited mark has been on the register. If you’re up against a cited mark that has been registered for decades, then the examiner will expect to see that you’ve used your mark for quite a long time, simply because of the duration of the cited mark.

So if you’ve only been using your mark for 18 months, it’s probably not going to be sufficient in that situation. However, if the cited mark has only been on the register for two years, then 18 months of using your mark may be sufficient, if that has been honest use. It can be a complicated situation, and it can certainly be helpful to be represented by a trade mark attorney if you are faced with these sorts of objections and you need to prepare evidence. A trade mark attorney can also provide advice and opinion as to whether your particular circumstances suggest there is at least a reasonable chance that your evidence will be sufficient.

In any situation where you are providing evidence of use to the trade marks office it is important to keep in mind that your evidence may be accessed by third parties under Freedom of Information requests.

The above are not necessarily the only ways you might combat section 41 or 44 objections raised against your mark. In certain circumstances other options could be available. Every case is different so don’t hesitate to contact us if you are facing an examiner’s report as we offer a free preliminary review of those reports to help determine if or what options you may have available to address the issues.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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