What you need to know to safeguard your most valuable asset

We know that it is important that a business keep good business records for at least 5 years in Australia, if not longer, to ensure that it can make good decisions for the business and its employees, show its financial position, and meet its obligations relating to taxation and superannuation.

We also know that one of the most valuable elements of a business is its trade mark(s). After all, it is the trade mark(s) of the business that consumers recollect and associate with goods and/or services or use to distinguish between similar goods and/or services offered by competing businesses. Therefore, keeping good business records in relation to your business’ creation and use of its trade mark(s) in Australia and worldwide is just as important as those your keep for ordinary business records.

Now, you may ask why it is important to keep good records of your trade mark use in Australia and worldwide. Or be thinking that your trade mark is already registered, why would you need to show use of your trade mark. It is possible that you may never need to file evidence of use of your trade mark throughout the lifetime of your trade mark however, below are some of the instances where evidence of use may be required:

to overcome an objection raised against your trade mark during examination;
to be successful in a trade mark opposition proceeding;
to be successful in an application for removal for non-use proceeding;
to maintain your trade mark registration by filing a Declaration of Use (in Argentina, Mexico, the Philippines and the United States);
during a claim for passing-off, trade mark infringement or under the Australian Consumer Law.

To be in the best position possible should you be required to file evidence of use, it is ideal to commence retaining evidence of use of your trade mark(s) they day that the trade mark(s) is coined and then adopted. Such evidence of use may include:

date of first use of the trade mark, in the jurisdiction of origin and/or the jurisdiction in which the evidence is to be the filed;
a brief summary of the coining and adoption of the trade mark;
examples of use of the trade mark in connection with the goods/services (i.e. labels, price lists, stationery, brochures, menus etc.);
copies of invoices showing the sale of the goods/services offered under the trade mark to consumers and/or distributors;
annual sales figures in connection with the goods/services offered under the trade mark;
information and/or materials showing the promotion and/or advertisement of the goods/services in relation to the trade mark (i.e. websites, social media, exhibitions, trade fairs, magazines, catalogues, direct mail, in-store, sponsorship etc.);
annual advertising expenditure in connection with the goods/services offered under the trade mark; and/or
any other information that you may consider relevant in relation to use of the trade mark.

The volume of evidence of use required will depend on the reason for filing the evidence. Given this, it is suggested that you retain some evidence of use of the trade mark(s) each year that the trade mark is used. This way, if you ever need to file evidence, you will have built up a solid record of evidence of use of your trade mark(s).

Key points to remember are:

in most cases, the evidence of use will likely need to be use of the trade mark(s) in the jurisdiction where you are required to file the evidence. For example, evidence of use of a trade mark in the Australian marketplace is unlikely to be sufficient evidence for a matter in the United States – you would need to provide evidence of use of the trade mark in the United States.
the evidence of use must be use of the applied for trade mark or a trade mark with additions or alterations not substantially affecting the identity of the trade mark.
the evidence of use should be relevant to the reason for filing the evidence of use. As Hearing Officer Smith stated in Monster Energy Company v Lukasz Grzegolec [2024] ATMO 147 regarding an opposition against BEASTHAMMER in which Monster Energy Company relied on its prior registrations for UNLEASH THE BEAST!:Much of the material annexed relates to use of the trade marks that consist of the word ‘Monster’ or (‘Claw device’), rather than showing any use of any mark that corresponds to the Trade Markin any way. .. the Opponent has filed hundreds of pages of material that shows no use of the Opponent’s Trade Mark or any other mark correspondence mark corresponding to the Trade Mark whatsoever. This evidence, showing use of the Monster-formative marks or Claw device is not in any way relevant…
It is unclear why the Opponent has chosen to file vast amounts of evidence that is either irrelevant, repetitive or unnecessary. This practice has provided it with no forensic advantage and would undoubtedly have increased the costs incurred…

Finally, if in doubt whether you should keep a particular type of use of your trade mark, keep it – it is better to have it and not need it, rather than to want it and not have it.