3 Tips for Filing a Statement of Use of Trade Mark

Angus

• 11 October 2021
• 14 October 2021
• 5 min read

A trade mark examiner from IP Australia may request that you file evidence of use under the Trade Marks Act 1995. The evidence can be related to ‘future intended use’ or ‘current use’ (depending on whether you have begun using the trade mark in commerce yet). The term ‘evidence of usage’ generally refers to information about your trade mark that is already being used in Australia and abroad. This article will explore some of the tips to think about before you file a statement of use for your trade mark with IP Australia.

1. Know What Proof of Use Is

To prove ‘evidence of usage’, the facts must demonstrate that your trade mark has become or will become associated with your goods or services. For instance, in certain situations:

1. the evidence must demonstrate that your trade mark has the potential to be associated with your goods or services; and
2. this is demonstrated by clear, documented intentions to use the trademark to market your goods or services.

How Much Proof?

The level of proof you will need is determined by the seriousness of the examiner’s objection to the trade mark. If there is only a slight objection, then you will not have to supply a lot of evidence. However, if they think there are many similar trade marks, you will need to show how your prior use allows you to use the trade mark.

How to Supply Proof

Evidence must be provided in the form of a declaration and submitted electronically using the online services page. When submitting files via the online services website, please follow the requirements for file types and sizes. Additionally, note it is safe and convenient to use the online services website.

2. Know What Information to Supply

Your declaration must include the following information:

1. the name of the person or company who is using or planning to use the trade mark (you or your firm); 
2. a person who has been granted permission to use the trade mark; or
3. the person or business from which you obtained the trade mark.

Proof of Actual Use

Your declaration should contain the following as proof of actual use:

• a summary of the trade mark’s history, including date and months of first use;
• the area or jurisdiction in which you have used the trade mark (include Australian states or regions, as well as foreign countries);
• the products or services that you sell under the trade mark;
• current examples showing how you have represented the trade mark to market such products or services (use the online services page to upload digital pictures of the packaging, advertising, and promotional materials);
• the annual expenditure on advertising and promotion of the trade mark in Australian dollars;
• the annual turnover numbers for the goods or services sold under the trade mark in Australian dollars. These statistics must only apply to the items or services in your application, as well as related goods or services; and
• any additional materials or information that can assist in demonstrating how you have utilised the trade mark.

Proof of Intended Use

Your declaration should include the following as proof of planned use:

• detailed information from business plans or other documents indicating a firm intention to use the trade mark. You should refer to and attach copies of these documents using the online services page;
• a description of the items or services for which this proposed usage is intended;
• any expenditures previously paid in preparation to utilise the trade mark in Australian dollars; and
• any additional materials or information that may assist in demonstrating how you intend to use the trade mark.

3. Remember That Evidence May Not Be Confidential

IP Australia will not accept a confidential letter as an attachment. Therefore, you should not include any information in the attached letter that you believe to be confidential. This is because others may ask for access to the information you have supplied.

You should keep in mind that:

• letters are accessible to the public for review; and
• the public may be allowed to view the declarations.

The federal freedom of information laws allows for third parties to obtain copies of declarations. If this happens, IP Australia may contact you for feedback before releasing your declaration.

Key Takeaways 

Before deciding to file a statement of use for your trade mark, you should consider:

• what information you are able to provide, noting that it might not all be confidential; 
• whether you have evidence of current use or concrete plans that can show intended future use; and
• what form to use on the IP Australia website.

If you have any questions about filing a statement of use for your trade mark, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions