Plan and gather your Evidence of Use

Often clients seek my advice to register a trade mark for “descriptive” names, which are usually difficult to register. Names are regarded as “descriptive” if they describe something about the goods or services which they’re used for. For example, “The Fish Shop”, the “Outdoor Decking Company”, or “Best Computers” would all be regarded as descriptive names. Often my clients will have used the name for many years, and so changing their name is not a preferred option.

IP Australia is likely to object to an application for a descriptive trade mark on the grounds that the name is ”not capable of distinguishing” the goods of one trader from another. The idea behind this is that a trade mark registration gives the trade mark owner the exclusive right to use that name in relation to certain goods or services. IP Australia doesn’t want to prevent other traders from using common words that would naturally describe their goods or services.

However, just because a name is descriptive, that doesn’t mean that it can’t be registered as a trade mark. Under the Trade Marks Act it’s possible to register a descriptive name if the applicant can show that the name has become synonymous with its own business. Applicants do this by providing a statutory declaration which has enough evidence to convince a trade mark examiner that the market thinks of them when they see or hear their trade mark. This is known as providing “Evidence of Use”.

Evidence of Use can be very difficult and time-consuming to compile, and it’s often easier to do this as you’re going along rather then spending days trying to collate such evidence only to let some often vital evidence slip through the cracks!

The type of evidence you may need to compile may include:

1. exhibits of actual use: business cards, signage, invoices, letterhead, stationery
2. marketing and advertising materials: pamphlets, brochures, newspaper and magazine articles, promotional advertisements, television promotions, customer surveys
3. online: website details where your trade mark has been featured (yours and on referral websites)
4. statistical information: annual turnover figures, advertising expenditure, indication of customer base, web statistics (eg. number of “hits” monthly on your site).

Once you’ve compiled your evidence of use, you should be able to get a trade mark attorney or IP lawyer to assess whether the information you’ve compiled will “get over the line” or not.

If appropriate, I would suggest you get a folder and call it something like “Trade Mark: Evidence of Use” then every time you remember, add to it and before you know it you’ve complied your evidence without even much effort.

Stay tuned, we’ll be providing an Evidence of Use Kit for you to prepare your own Evidence of Use – if you’re so inclined and can’t afford to use a professional agent!