Articles > Intellectual Property

How Do I Show Evidence of Prior Use?

February 1, 2021   Jethro FoxPhilip Evangelou

An important step in protecting your business and your image is to register your logo or brand name as a trade mark. Having a registered trade mark provides you with the necessary protection from infringement from another business. 

To get this protection, you must first file an application to have your trade mark registered. Yet, it may be the case that there are some issues with your trade mark application, which will result in you receiving an Adverse Report from an examiner at IP Australia. 

The Adverse Report will identify the specific reasons that your trade mark application has not been successful. A common reason is that ‘your mark is substantially identical or deceptively similar to an existing trade mark application’. The existing trade mark also has an earlier date of registration (priority date). 

This means that another business has already registered their trade mark which is similar to yours, and they use it to sell goods or services that are similar to the goods or services that you sell at your business. 

Yet, this may be overcome by showing evidence of prior use as per Section 44(4) of the Trade Mark Act 1995 (Cth).

Evidence of Prior Use Declaration

To overcome an adverse report for your trade mark application, you will be required to provide an Evidence of Prior Use Declaration.

This declaration will provide information to IP Australia showing how you have been using your trade mark in the years prior to your registration application and how it is representative of your brand image. 

By showing that you started using your trade mark on a date that is earlier than the conflicting trade mark, and that you have been using the trade mark continuously since this time, this will put you in a strong position. 

The declaration should include information expressing:

  • What goods and services have been sold under the trade mark;
  • How the trademark has been used to sell these goods and services;
  • The date you first started using the trade mark to sell these goods and services;
  • How you have used this trade mark continuously up until the date of your application.

Providing as much evidence as you can is highly recommended. 

What Happens Next? 

If the IP Australia examiner is satisfied with the evidence you have provided in your prior use declaration, then this will allow both your trade mark and the existing trade mark to exist at the same time. 

Unfortunately, if you are unsuccessful, you may have to think about a complete rebrand of your business image. 

To Sum Up

It is always recommended that you register a trade mark for your business as early as possible to try and avoid receiving an adverse report from IP Australia. 

Considering the lengthy and costly process involved in providing evidence of prior use, it is also recommended that you speak with a lawyer about your issue. 

If you need assistance with any IP issues, feel free to contact one of our trademark lawyers by calling 1300 337 997 or filling out the form on this page.

About Jethro Fox

Jethro FoxJethro is a paralegal. His main legal interests are with Intellectual Property, Technology and Innovation, as well as areas of Corporate Law. He is in his final year of a Bachelor of Laws/Bachelor of Economics double degree at the UTS.

About Philip Evangelou

phillipPhil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.