Preparing Evidence of Use in Trade Mark Prosecution

Evidence of use is proof that your trade mark isn’t just an idea, it’s a living, active part of your business. It tells IP Australia: “We’ve been using this mark in the real world, and people associate it with our goods or services.” Evidence of use (which we can draft for you) typically includes-

• A statutory declaration explaining how you’ve used the mark.
• Supporting exhibits such as advertising, packaging, sales figures, media coverage, or online presence.
• A cover letter from your attorney setting the scene for the submission.

When Is Evidence of Use Needed?

You’ll generally need to provide evidence of use when your trade mark application is flagged in an adverse examination report, specifically under section 41, i.e. your mark is considered not distinctive enough and section 44, i.e. your mark is too similar to an existing registered or pending trade mark. Each situation requires a tailored approach. Let’s look at both in turn.

Overcoming Lack of Distinctiveness under Section 41

A Section 41 objection arises when your mark is seen as generic, descriptive, or too vague to uniquely identify your business. For example, trying to register a term like “Fresh Apples” for a fruit business might hit a roadblock.

To overcome this, your evidence must demonstrate that your trade mark has acquired distinctiveness through use. That is, consumers now see it as a badge of origin, not just a descriptor. We help clients assemble compelling evidence, including-

• The date of first use and proof of continuous use since then.
• Geographic extent of your trade mark use (national? state-wide? local?)
• Advertising spend over the years—how much you’ve invested in building brand recognition.
• Turnover figures for goods/services sold under the trade mark.
• Examples of the mark used on packaging, websites, advertisements, signage, and more.

The more historical and geographically wide-reaching your use, the better. In some cases, we may recommend a consumer survey to strengthen your case, particularly for borderline descriptive marks.

Dealing with Conflicts with Earlier Marks under Section 44

A Section 44 objection occurs when IP Australia identifies another trade mark that is considered too close to yours, in terms of spelling, sound, appearance, or meaning, and is registered for similar goods/services. Here, evidence of use can support arguments based on-

• Prior Use– If you can prove you were using your trade mark before the other party filed theirs.
• Honest Concurrent Use– If you’ve been using your mark in parallel with the other mark without causing confusion.

In either case, we’ll help craft a declaration that includes-

• When and how the trade mark was first used.
• Continuity of use, with supporting documents like dated invoices, social media archives, and product photos.
• Advertising and promotional efforts to build brand recognition.
• Geographic areas of operation.
• Any knowledge (or lack thereof) of the conflicting mark when you launched.

We’ll also include visual and dated evidence, i.e. catalogues, packaging, social media screenshots, customer testimonials, even media coverage.

What Counts as Good Evidence?

The key is relevance, clarity, and credibility. Anecdotes or vague statements won’t cut it. IP Australia wants hard proof, i.e. documents, images, figures, and specific dates. Here’s what typically makes a strong submission-

• Screenshots of websites with visible dates.
• Copies of advertisements (print, digital, radio scripts).
• Photos of product packaging or labels featuring the trade mark.
• Sales invoices or business records.
• Signed declarations from distributors, industry experts, or long-time clients.
• Copies of awards or media recognition where your trade mark is mentioned.

If you’re relying on evidence to cover multiple goods or services, make sure each one is backed up. If not, IP Australia may ask you to narrow your application.

Declarations

Declarations are not just simple statements; they’re legal documents which are made under penalty of perjury. They must comply with strict formatting rules under the Trade Marks Regulations and include specific content.

We prepare the full declaration on your behalf, in the required format, with all supporting exhibits annexed properly. Whether the declaration is to be made by a director, a senior employee, or an authorized representative of the business, we guide you through the entire process, and you just review and sign.

We also handle any translations, if necessary, and ensure everything is submitted through the correct online channels with IP Australia.

Confidentiality and strategic disclosure

A lot of evidence of use includes sensitive business information, turnover figures, sales data, customer lists. We’re experienced in managing that sensitivity.

We know exactly what belongs in a declaration (which is generally not made public), and what should be kept out of the cover letter (which can be). If Freedom of Information requests arise, we work with clients to manage that process, including seeking confidentiality directions if needed.

Using predecessor or third-party use?

In some cases, the use you want to rely on wasn’t by your business directly. Maybe you acquired the brand from another business, or the mark has been used by an authorized distributor.

The law is very specific about when and how that kind of use can count. For example, use by a predecessor before acquisition only counts if you acquired goodwill with it, i.e. not just the mark itself.

We assess whether predecessor use is legally valid and present the argument clearly and effectively. If the use is by an authorized user, we’ll also address the control requirements under the Act to ensure your case holds up.

Why Get Help from a Specialist Firm?

Most businesses don’t have the time or frankly, the expertise, to prepare compelling, compliant evidence of use. That’s not a reflection on you; it’s simply that trade mark law is technical, and the rules around evidence are strict.

We’ve prepared evidence submissions across a wide range of industries, i.e. from tech startups and food brands to fashion labels and service-based businesses. We know how to connect your commercial reality to the legal requirements that IP Australia enforces.

If your trade mark has run into trouble during examination, we step in and handle everything, i.e. evidence strategy, document drafting, legal framing, and submission. Our goal is to maximize your chances of getting the mark accepted, with minimal hassle on your end.

Let’s get your trade mark application back on track

Receiving an objection from IP Australia isn’t the end of the road. In many cases, it’s just a sign that the Registrar needs more information before they can accept your trade mark.

That’s where our work begins. If you’ve received an adverse report, we’ll assess the issues, guide you on your options, and where appropriate, prepare a complete and compelling evidence of use submission tailored to your case.

Reach out to our team today, and let’s protect the brand you’ve worked hard to build.