Intellectual Property Law Update - Evidence in the Trade Marks Office – Common Problems – Part 2

Intellectual Property
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Another common problem with TMO evidence is lack of detail. Detail is important. Too often it is omitted in the preparation of evidence. Without it, evidence can be attacked as incomplete, ambiguous or entirely irrelevant.

Unfortunately, it is not uncommon for parties to seek to prove reputation (or use) merely by reference to sales or advertising figures. This is insufficient. The evidence must show a nexus between the sales or advertising expenditure and the mark in which reputation in claimed.

For sales figures, this will include evidence of how use of the mark was involved in the sale. For consumer goods, this might be simple because the trade mark is often clearly marked on the product itself. But even in those circumstances, proof of sales alone will not always be enough. In Hills Industries Ltd v Bitek Pty Ltd, Lander J considered that sales of more than $20 million and advertising expenditure of nearly $400,000, in circumstances where the trade mark appeared on every product sold, “does not prove any reputation at all.” His Honour considered the evidence “may tend to prove that the goods sold under the mark are very marketable goods.”

For goods that do not carry the trade mark and for services, proving reputation is even more problematic. Evidence of sales is important but it must always demonstrate a nexus between the sales and the use of the relevant mark.

Evidence of advertising can also be problematic if insufficient detail is included. It is certainly not enough to merely provide the delegate with a photocopy of an advertisement. Essential additional detail includes evidence of where the advertisement was published, when it was published, the typical readership of the relevant publication and its circulation.

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Ben Gardiner practises primarily in intellectual property litigation

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