4 Tips for Providing Section 44 Evidence
Emily Young
Section 44 of the Trade Marks Act refers to trade marks that conflict with trade marks that are already registered or pending registration. Therefore, if your trade mark does not meet section 44 upon examination, you will need to address this by supplying relevant evidence to overcome this objection.
When providing section 44 evidence, there are three different categories of evidence that may be relevant. You will have to supply evidence that you use your trade mark under at least one of the following categories:
- prior use;
- honest concurrent use; or
- other circumstances.
To help you overcome such an objection, this article will take you through 4 tips for providing section 44 evidence.
1. Provide Enough Evidence
The first tip is to provide enough evidence. This is difficult to measure, with the amount of evidence required differing significantly depending on how serious the conflict is. Your trade mark may also conflict with more than one trade mark, which will also increase the amount of evidence you should provide. Therefore, if your trade mark application is for multiple classes, you will be required to provide evidence regarding each of these goods or services.
2. Use the Right Form
When responding to a section 44 objection, you will need a declaration form. This form will be published online and available for public viewing, so it is important that you do not include any personal details that you would not want to be published.
3. Provide Appropriate Evidence
When providing section 44 evidence, there are three different categories of evidence. You will have to supply evidence that you use your trade mark under at least one of the following categories:
| Type of evidence | Explanation | Evidence required |
| Prior use | Prior use refers to demonstrating that you were using your trade mark before the owner of the conflicting trade mark was using theirs. Additionally, you will need to show that you were using your trade mark at the time of application. | Your declaration should include: • the specific goods and services you sold using the trade mark; • the date you first used the trade mark in Australia; and • explanation of whether you used the trade mark continuously. |
| Honest concurrent use | Honest and concurrent use refers to providing evidence to show that you used your trade mark at the same time as the other person’s trade mark and that you were always using it honestly (i.e. without deliberately infringing on their trade mark). | Your declaration should include: • when you selected your trade mark; • explanation about whether you knew of the conflicting trade mark before selecting yours; • the goods or services sold using the trade mark; • the date you first used the trade mark in Australia; • evidence of advertising and promoting the trade mark (including the value spent on advertising and promotion); and • evidence of the annual turnover of sales of goods or services sold using the trade mark. You should also provide evidence of any marketing or advertising materials used that include this trade mark. |
| Other circumstances | Other circumstances refer to providing any other evidence of relevant circumstances that mean IP Australia should approve your trade mark for registration (for example, consent from the owner of the conflicting trade mark). | Any evidence relevant to the ‘other circumstances’ you are claiming, such as written consent. |
4. Respond on Time
You will have 15 months to respond to a section 44 objection. However, these 15 months also include the time the examiner has to review and respond to the supplied evidence, so you must provide your response several weeks before the 15 months is up.
If needed, you will be able to apply for an extension of time to allow you more time to respond. However, you must meet your deadlines or risk your trade mark application lapsing.
Key Takeaways
A section 44 object refers to an objection of your trade mark application upon examination. If your trade mark does not meet section 44, that is, your trade mark conflicts with a registered or pending trade mark, you will need to respond to this objection. Some key tips to keep in mind when providing section 44 evidence is to:
- provide enough evidence;
- use the correct form;
- provide appropriate evidence; and
- respond on time.
If you need help providing section 44 evidence, our experienced trade mark lawyers can help. Get in touch with them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
Section 44 of the Trade Marks Act refers to trade marks that conflict with trade marks that are already registered or pending registration. Therefore, if your trade mark does not meet section 44 upon examination, you will need to address this by supplying relevant evidence to overcome this objection.
Some key tips to consider when providing section 44 evidence is to provide enough evidence, use the correct form, provide sufficient and relevant evidence and respond on time.