Boost eSignature Legitimacy for Trademark Assignment Agreement in Australia

How to eSign a document: eSignature legitimacy for Trademark Assignment Agreement in Australia

good afternoon everyone and welcome to today's webinar in the first in our advanced trademark series evidence of use section 41. i'd like to introduce today's presenters laura and stephen laura and steven both work as trademark examiners at ip australia when you submit a trademark application to iq australia trademark examines other people who look at your application and consider whether it meets the requirements for registration under the trademarks act they are also responsible for looking at any evidence you might submit in support of your application which is what they'll be talking about today i'll hand over to laura and steven and we can get underway hi everyone my name is stephen and i'm laura and we will be your hosts for today's session so as kalex mentioned the focus of our webinar today is trademarks trademarks are the signs that you use to differentiate your products from those of your competitors the specific focus of today's webinar is providing evidence to overcome an issue with your trademark application specifically an issue that has been raised under section 41 of the trademarks act so if you have already submitted your application and received an adverse report that mentions section 41 this is the webinar for you today's webinar is not an introductory session the advanced content we discuss assumes that you have already attended our understanding trademarks or trademarks 101 webinars or that you otherwise have a good base understanding of trademark law in australia if you haven't yet participated in one of our introductory webinars you don't necessarily need to leave this session but it might be helpful to go back and review that webinar after we finish up today so before we jump into today's content let's have a quick refresher about the trademark basics a trademark is a sign that is used to distinguish the goods or services of one trader from the goods or services of another trader most commonly a trademark consists of a business name or logo or a combination of the two but a trademark can also take many other forms as listed up on the screen once a trademark is registered the registration lasts for 10 years and can be renewed indefinitely but sometimes that path to registration does come with a few hurdles today we'll be looking at some of the ways to help your trademark overcome those hurdles and proceed to registration specifically we'll be looking at when to provide evidence what the evidence needs to show and what kind of evidence to provide there are a few different occasions where it's appropriate to provide evidence of use to ip australia the occasion we'll be focusing on today is providing evidence to overcome an issue that the examiner has identified with your application the evidence is submitted after you receive your adverse report as part of the examination process you will know if this applies to you because in the report you received from your examiner they will have mentioned section 41 and will have stated that providing evidence of use is an option to overcome the issue that they have raised in many cases it may be your only option to overcome a section 41 issue so all trademark applications are examined under the trademarks act within this act there are a number of sections that an examiner considers to determine whether your mark is able to be registered so this section will be focusing the section we'll be focusing on today sorry section 41. section 41 looks at whether your trademark is capable of distinguishing your goods and services from your competitors goods or services a trademark should be something that can act as a badge of origin this means that when customers see your trademark they know that it indicates goods or services that come from your business descriptive words often can't act as a badge of origin because customers see them as describing the product rather than indicating who they come from and other people should be able to describe their products using those words so other examples of marks that are unlikely to act as a badge of origin include those that contain common surnames or the name of a geographic location or those that are common to the trade such as serial numbers or commonly used slogans if you try to register a trademark that consists of material that other traders should also be allowed to use the examiner will raise an issue under section 41. they will send you an adverse report detailing why there is a problem and how you might be able to overcome it most often you do have the option of providing evidence of use to try to overcome the issue and get your mark accepted let's run through an example to illustrate this concept we'd likely all be familiar with the computer company apple the word apple is capable of distinguishing their various computer goods because this isn't a word that other computer companies would normally need to use if somebody who was selling fruit tried to register the word apple as a trademark it wouldn't be fair for them to be the only people allowed to use that word and so we would raise an issue under section 41 of the act this is an extreme example because no amount of evidence could convince ip australia to allow that one person to have a monopoly over the word apple in the apple industry but where the trademark isn't quite this descriptive providing evidence of use can sometimes overcome the problem depending on the severity of the issue with your mark you might be able to show us that through use of your trademark what was once a descriptive word can now operate as a badge of origin because of the effort and expense you have put into promoting your mark as a brand when you submit section 41 evidence your aim is to show the examiner that your mark is capable of distinguishing distinguishing your goods or services from those of anyone else this means when consumers see your trademark they know that it designates your specific goods or services rather than the goods or services more generally or descriptively section 41 is broken down into two relevant parts subsection 413 and subsection 41.4 you will know which category your application falls into by looking at the report you have been sent towards the end of the report there is a heading that says actions you can take in this part of the report it will mention either 41 3 or 41 4 or maybe even both subsection 41.3 applies to trademarks that have no inherent adaption to distinguish these are trademarks that other traders need to use subsection 41.4 applies to trademarks that have limited adaption to distinguish these are trademarks that other traders are likely to want to use but don't necessarily need to the type and amount of evidence you will need to provide will be different depending on which issue is raised generally speaking a ground for rejection under subsection 41.3 will require more substantial persuasive and high value evidence the main differences are that for subsection 41.4 you can provide evidence of use from before or after the day that you applied for your trademark for subsection 41.3 the only evidence that will be relevant is evidence that you used the trademark in australia before you applied for it for subsection 41.4 you can also show how you plan on using the trademark if you haven't actually used it that much already these plans do have to be quite in-depth you can't simply show that you've considered using the mark and have started making preliminary plans you would have to demonstrate that you've committed to using the mark and that you have solid commercial plans in place you might be able to show this by providing pre-launch market research and market estimates product launch plans and information about your advertising and sales plans this option isn't available with subsection 41.3 it all has to be actual use of the trademark before you even applied no matter which ground for rejection applies to your mark your aim is to demonstrate to the examiner that only you should be allowed to use your trademark in relation to the goods or services that you have claimed if the examiner raises a section 41 issue it means that their research showed that other people should be able to use the mark you've applied for or something pretty similar to it so what you'll be trying to show with evidence is that you've invested so much time effort and expense into promoting the trademark as being an indicator of your goods or services that only you should have the exclusive rights to use it the evidence you submit should be supplied in a declaration that is signed and dated by you with all your evidence attached to the declaration when the examiner receives your evidence there's a few things they're looking out for first of all the examiner will be looking to assess whether your use of the trademark is as a trademark this means that you aren't using the words descriptively yourself but that you are promoting the trademark as an indicator that the goods or services that have that trademark on them are coming from you or your business we'll look at something like mcdonald's as an example they use the trademark mcdonald's to differentiate their product when people buy a cheeseburger from a shop displaying the mcdonald's trademark they know that it is coming from the business they know as mcdonald's and they know what to expect from the product that's use of a trademark as a trademark on the flip side would be the word cheeseburger or something like double cheese these might be words that mcdonald's uses but they are known words with ordinary meanings and they aren't used by just one trader other businesses selling cheeseburgers want to be able to describe their goods using these ordinary known words so we can't allow just one business or one person to register cheeseburger as a trademark if they're selling food so to fulfill the requirement for use as a trademark you need to show that your mark is used to distinguish your goods or services from your competitors and that the mark isn't something that other people should be allowed to use next up is use in the course of trade this means actually using your trademark in conjunction with offering the goods or services for sale many of the preliminary steps that are taken when setting up a business don't count as use in the course of trade things like registering your business name securing a domain name setting up social media profiles these don't count because you haven't shown to your customers the goods or services that you are offering for sale using your trademark likewise showing proof that you hired a graphic designer to design a logo or the packaging of your product or that you prepared a price list for when you started trading generally won't assist you in fulfilling this requirement essentially you want to demonstrate that customers have been exposed to your trademark and that your goods or services have been offered for sale in connection with the trademark the third consideration is whether the use is australian use this one is quite straightforward you're trying to demonstrate to the examiner that your trademark has been used as a trademark in the course of trade in australia using a trademark online often means it is seen by people all around the world but this doesn't automatically count as use in each country where someone has accessed the website it's likely that most people who are tuned in to today's webinar are using their trademarks in australia but if you have any concerns about whether your use will count as use in australia we definitely recommend giving your examiner a call to discuss your unique circumstances your examiner's name and phone number will be listed on the adverse report that you have been sent now we'll move to the fourth consideration the examiner looks at whether your use is upon or in relation to the relevant goods and services in your evidence you should aim to demonstrate that you have been using the trademark in relation to all of the goods or services that the issue has been raised in relation to if you have claimed a wide variety of goods or services but are only using the trademark on one or two of those items at the moment it might be possible to restrict your claim to just those items your examiner will let you know if this is the case the final consideration is whether the use is by the person claiming to be the trademark owner you should aim to show the examiner that it is you or your business that has been using the mark you may also be able to show evidence from a predecessor in title or from someone you've authorised to use the mark this isn't to say that you shouldn't show third-party mentions of your trademark such as newspaper articles or other people mentioning your trademark on social media in fact those can be very useful if it is clear they are referring to your business all this means is that if someone else used to use the mark and now that they've stopped you've decided to take it without having some kind of commercial negotiation with them only the evidence of you using it will count again most people listening in shouldn't have any difficulty showing this but please contact your examiner if you do have a unique situation our next slide looks at an example of that first consideration use as a trademark as that can often be one of the more difficult concepts to grasp we'll use the hypothetical example of milka's milk let's assume that milk is milk are australia's biggest milk company they are stocked in every shop spend hundreds of thousands of dollars on advertising and have been the market leader in australia for over two decades their milka's milk trademark is protected and well recognised but they are now interested in protecting their tagline the freshest there is they applied to ip australia for these plain words the freshest there is without the milk as milk part of their trademark when the examiner examined this application they raised an issue under subsection 41.4 because they found that other people would also like to describe their milk products as being the freshest there is being the freshest there is is a desirable quality for dairy and these words don't indicate any one particular trader at first glance so in their evidence submissions milkers milk will need to show that through their use of these words the words have lost their ordinary meaning and are now capable of acting as a badge of origin for their products let's say for example that milk is milk have included this tagline on every bottle since the first day they started selling milk in australia milk's milk provide evidence to the examiner that shows how many bottles of milk they have sold how many shops across australia sell their milk and how much revenue they have generated let's assume all these figures are significant things are looking promising for milk as milk but it all depends how they have been using these words can these impressive figures be attributed to the words the freshest there is or is this in fact evidence of use of the milka's milk mark only which wouldn't be relevant here it all depends on how they're presenting and promoting the mark let's look at this first image of the milk carton on the front in huge bold letters are the words milk is milk when you flip over the carton you'll find the normal nutritional information and a short paragraph setting out milkers history there in that paragraph in tiny writing it also says something like milka's milk has been made from fresh cow milk in australia for over 30 years we can say without doubt it's the freshest there is compare this to the second milk carton that has the words the freshest there is blasted across the front with a small milkers logo at the top consider also that in all milk is advertising the words the freshest there is are the words that get your attention they are actively showing customers that these are their words and when you see these words you know you're buying milk as milk in this comparison the first example cannot be said to be trademark use they've used this descriptive phrase alongside other descriptive materials such as the ingredients and how long they have been making milk in the same way that no one can obtain a monopoly over the words cow milk milker will not be able to obtain a monopoly over the freshest there is in this example it is clear that the trademark being relied on is milk as milk not the freshest there is we therefore cannot give any weight to the revenue and advertising figures provided as these cannot be said to be in conjunction with the words being claimed however with the second example it's clear that they have been trying to promote these words as designating their products and their products only consumers have come to associate this otherwise descriptive phrase with milkers products alone through their promotion of the words as a trademark we will be able to consider the revenue and advertising figures as relevant for as long as the milk cartons have had the freshest areas as the big logo on the front ultimately the question that the evidence should be seeking to answer is have consumers come to see the freshest there is as a badge of origin that distinguishes milk as milk from its competitors similarly when you are considering whether providing evidence is an option for you keep in mind that your evidence of use will need to show the trademark being used as a trademark evidence that shows it being used descriptively will not be persuasive in overcoming the issue so we've stepped through what the evidence needs to show but now we'll move on to how you can actually go about showing it what kind of evidence is going to help you show that your trademark is capable of operating as a badge of origin we class these types of evidence into high value evidence and low value evidence high value evidence is the type of information that is more likely to help you achieve acceptance low value evidence is the type of information that generally won't assist your case it's okay to include it but if it is the only evidence you are able to provide the likelihood that you will be able to meet the threshold for evidence is lessened so we'll start with the things that aren't so helpful first up business name registrations you don't need to provide us with evidence that you've applied for your business name this is because business names are simply administrative there is no requirement for them to be distinctive and merely registering the name does not amount to actually using the trademark or intending to use it likewise domain name registrations simply owning the rights to use a particular domain name does not amount to use of the trademark in relation to the relevant goods or services documents or communications that are internal to your business generally do not satisfy the requirement of being used in the course of trade this includes things such as business plans internal style guides or other planning documents that only those within the business have access to documents and communications that your customers or potential customers can see will be more useful in the final line there unsupported claims of reputation and market research the important word here is unsupported it's actually really important to provide information about your reputation and your position in the market but you have to back it up with substantial evidence for it to be meaningful so what do we consider to be substantial evidence the first example of high value evidence is income figures you should aim to show the examiner the amount of income that has been generated through your use of the trademark on the goods or services that you have claimed this can be presented in a simple table with the years listed down one side and the relevant annual income figures on the other it can also be helpful to provide the examiner with information about how many sales you have made and the unit cost of the goods or services that you're selling under the trademark this helps them understand the context of your income and determine how substantial it is generally speaking the more goods or services you have sold or provided the more people are exposed to your trademark and the more the marketplace is likely to recognize your mark as indicating a badge of origin you might also be privy to information about your market share this can be good information to provide to the examiner so that they can get a sense of your place within the relevant market any such information should be credibly sourced to be relied upon next up is advertising you want to demonstrate to the examiner that you have invested a significant amount of resources into promoting your trademark as something that differentiates your specific goods or services from those of your competitors there are endless ways you can show this because there are endless ways you can promote your products you may have promoted your trademark online on your own website or social media pages or on the websites or social media pages of others you may have promoted your trademark in print media such as newspapers magazines pamphlets and brochures you should send in examples of each of your different types of advertising but also provide context around them for example you might send us a copy of a pamphlet that you put together the existence of the pamphlet alone is not sufficient to demonstrate the extent of your advertising you should advise us how many copies were distributed how and where they were distributed and on which dates likewise with something like signage you should let us know the size of the sign where the sign was displayed for how long and how many people were likely to have seen the sign if that's information that you have with online content you can use online tools such as the wayback machine to show a snapshot of what your website looked like at different points in time if you're relying on social media content to demonstrate your advertising you should also provide insights into how many people liked or followed the page at the time of the post and what the rate of interaction was no matter how you have been promoting your trademark the important thing is to provide information about the context of the promotion so now we'll move on to examples of use in the marketplace this can be things like the use of your trademark on the goods themselves or on their packaging use of your trademark on the website that you sell your goods or services from or use on your physical premises any form in which you use your trademark in connection with the goods or services you have claimed can be supplied here the important things are that the use should be visible to the public and it should make a connection between the trademark and the goods or services offered the next stop point is mentions in media if other people are talking about your trademark in connection with you this is a really good thing it shows that you're building brand awareness and that other people know your trademark is referring to you and your goods or services exclusively examples of mentions in media can include other people recommending your product by referring to the trademark or someone doing a profile on your business that attributes your trademark to your goods or services alone this could be on social media or other websites or in print form it's important to demonstrate to the examiner how long you have been using the trademark on the goods or services that you have claimed it may be that you started selling just one or two items and then branched out over time you should provide evidence from when you very first started and from when you started to expand the brand using the online tool wayback machine can be a good way to show when you started using your trademark online it can also be good to provide evidence regarding the dates of important milestones such as when your business expanded started up in a new location or started offering new products to supplement all of the evidence supplied so far you can also provide website analytics or information that you have available about your customer base as we mentioned earlier if the issue with your trademark was raised under subsection 41.4 and you haven't been using the trademark for very long you might wish to provide evidence of intended use in this case internal business planning documents can be useful to show exactly how you plan on using the trademark and how you plan on educating your customer base that the mark distinguishes your goods or services from those of your competitors this list of examples should give you an idea about the kind of ways you can show that you have been using your trademark as a trademark in the course of trade in australia upon or in relation to the goods or services claimed to satisfy those five requirements that we stepped through earlier of course this list is not exhaustive if you have something you think might be of interest to the examiner there's no harm in sending it in and seeing what they say however we can't emphasize enough the concept of quality over quantity you will have a much higher likelihood of success if you present your evidence in a way that makes it clear for the examiner to see that your mark has become capable of distinguishing instead of providing screenshots of your whole facebook feed consider selecting a few different posts from different points in time to illustrate how you have been using the mark over the past few years you have 15 months from the date that you received the report to overcome any of the issues that were raised the final date that you can overcome the issues will be listed on the report as your acceptance due date you should try to submit your evidence about a month before that date at the latest to give the examiner enough time to consider all your submissions carefully if your first attempt at providing evidence isn't successful the examiner's second report will explain why and if you still have time before your acceptance due date you can try again putting together evidence can take quite a bit of time effort and money and there's no guarantee that it will actually overcome the issue you are in the best place to know what's best for your business but if you found yourself wondering whether it's worth it to try submitting evidence for your application there are a few things that you can think about to help you decide spend some time thinking about how long you have been using the trademark and how much you have invested into the brand if you have spent a lot of money getting the trademark off the ground have built up goodwill using the trademark and many people know that it identifies your goods or services you may wish to continue pursuing the application and providing evidence you could also think about whether you have applied for a unique brand and whether that's something that's important to you if a section 41 issue has been raised in relation to your trademark there is a good chance that your trademark and your products may not stand apart in the marketplace if you're only just starting out and aren't too attached to the trademark you're currently using you may want to take this opportunity to come up with a new trademark you could consider creating a more unique distinctive brand so that you can really stand out and be remembered if you are thinking that changing your brand might be the best option for you you might like to try our tm assist tool this tool can help you search the register for other trademarks so that you can be sure that someone isn't already using your name or something similar when you're ready to apply consider using our quick turnaround head start service through this service an examiner will assess your trademark and advise you of any issues within five business days then you can decide whether to make your application official depending on the outcome of the assessment if you have invested a significant amount of time and money in a brand and you really want to protect it and continue to use it in the marketplace then it may be worth providing evidence of use putting together evidence can be quite difficult and ensuring it is substantial and persuasive enough to overcome the issue is even harder it's certainly possible to put together evidence yourself but if you are finding it a bit overwhelming you might consider hiring a trademark attorney to represent you these are professionals with experience in compiling evidence and ensuring it is represented in the right format they may also be able to advise you on the likelihood of success of your application if you think hiring an attorney might be the right choice for your business you can find one on the institute of patent and trademark attorney's website which is ipta.org.au or by using an internet search engine such as google you can also speak to the examiner who examined your application if you haven't already their name and number will be listed on the report that you were sent they won't be able to give you advice about what you should do but they will be able to give you information or talk you through the requirements if you do choose to put together evidence once you have made the decision to provide evidence you should start to gather your materials and consider how you will present them to the office it is a requirement that evidence is provided in a declaration a copy of the declaration form will be provided alongside the slides from today's webinar that will be sent to you if you complete the post webinar survey otherwise it is available on our website ideally your evidence will be provided in a logical order and will be tailored to address the specific issue that has been raised with your trademark it is very important to supplement the statements in your declaration with illustrative examples that demonstrate each aspect of use that you have chosen to highlight ultimately the declaration should provide detailed and targeted information showing that your use has led to the trademark distinguishing your goods or services from those of other traders and that's everything we had prepared for you today we hope this has been helpful for you in gaining a clearer sense of what your next steps might be if you do find yourself wanting some extra information please don't hesitate to call the examiner whose name and number will be listed on your report okay this brings us to the end of the main presentation thanks so much for explaining evidence of use section 41 laura and stephen so we've come to the time for a bit of q a and it looks like there are already a few questions in coming through do our best to answer as many as we can so the first one that has been put through is from david what if the trademark owner is merely a shell company set up for ip ownership but another related company operating company is using the trademark in the course of trade so this one does depend on the particular relationship between the two parties um it can often be that if the shell company set up for ip ownership and then they can give permission for the operating company to use the trademark so they'll count as one of those authorized persons that we mentioned earlier so use from a person that the owner has authorized to use the trademark that can count as evidence for section 41. thanks for that laura next question is coming through from katrina are there any instances where evidence of international reputation will be useful example where a brand has gained reputation overseas and intending is intending to use a mark in australia but has not actually used the mark in australia yet can you submit evidence of use overseas to show intended use so you can certainly submit the evidence of the overseas reputation um that alone is certainly not going to be enough to show evidence for intended use there has to be quite a established business plan of how the mark will be used in australia how it's intended to be used um so we can consider that they've had great success overseas and do have a huge reputation overseas and maybe make assumptions that the same could happen in australia but certainly we would need to see evidence of how the applicant is going to make that happen what their plan is for that so of course you can submit it and the examiner will consider it but international reputation alone is not going to be enough great thanks again laura the next question comes in from susan much of the evidence ipsj requires is commercial and confidence examples sales and marketing plans is it visible to or can be obtained by third parties so um when information is provided to us um we don't necessarily it's not publicly available at the first instance but when people make requests under freedom of information they can gain some of that information but if you do want something to be confidential you just have to let us know so just mark the parts that are commercial in confidence of your evidence and then those will definitely not be um made available under freedom of information um but certainly general information that is not marked as commercial in confidence um it may be able to be seen by third parties if they do make a claim under foi so if there's something you don't want your competitors to see just mark it as being commercial in confidence great thanks for that the next one comes through from kate if the prior use of a trademark is in several classes is it necessary to provide evidence for each of the classes listed yes absolutely so if you're um intending to claim all of those goods and services you do need to show evidence of use on all of those goods and services so across all of the classes that you've claimed definitely next one is from alicia not all attorneys are members of ipta another way to find attorneys is through the trans tasman ip attorneys board which has a directory for attorneys at https .ttipattone.gov.eu thanks for that one yes thank you you can also conduct a google search for trademark lawyers trademark attorneys there's many different terms you can use to find people that may be in your local area or provide their services online great another one here from jennifer will sensitive and confidential confidential materials provided be made available to public no so this one's similar to that question we had earlier if there's something that is confidential please just mark it um as confidential and that will ensure that it's not distributed um and then information that we generally consider to be confidential even without that is things such as income so yeah it does depend um perhaps no one will ever do a freedom of information request in relation to your mark but certainly we're not giving this information out to the public all right we'll go to the second last one from katrina what is the threshold requirement for submitting evidence in support of an argument of honest concurrent use do you have to show that you haven't established a stronger reputation than other trades using similar marks or that you have established some reputation in the market using your applied full mark and there is some consumer recognition of your brand um so this question seems to be relating to honest concurrent use and other traders using similar marks this is the topic that we'll cover in our next webinar that was mentioned earlier so we'll provide some more details about when that's running and hopefully we'll answer that question for you then but if not feel free to ask it again we'll just stick to the 41 topic for today great and we've got one more question coming in in the slogan example the freshest theory is does it matter which class the applicant has applied for as to how the show evidence is viewed how do you institute eg beverage class versus advertising marketing class yeah definitely so when the examiner is considering their application in the first instance um they will have made the assessment based on what goods or services have been claimed um so if the words the freshest theories are claimed on something that um it's not generally a desirable quality for it to be fresh then there may not be an issue there so it all depends on what they've claimed it on and whether other traders would need to use those words in relation to the goods or services claimed um so then if an issue is raised that will of course affect the way that the examiner views that evidence as well great thanks again laura and stephen