Preparing An Evidence Of Prior Use Report

In any business, branding is really important — especially if your business has been in the game for quite some time. The last thing you want is a competitor using your brand name that you’ve worked very hard to build.

Often, the first step in making sure your brand is protected is by applying for a trade mark.

However, sometimes there may be complications with your trade mark application, causing you to receive an adverse report from IP Australia. 

In some cases, your application might have difficulties because there is already a registered trade mark similar to yours.

At first, this can be very frustrating. Especially if you’ve been using that brand for many years.

If this is the case, there is a way for you to challenge this adverse report. We do this through preparing what’s called an Evidence of Prior Use Report.

What Is Evidence Of Prior Use?

Preparing an Evidence of Prior Use Report means putting together evidence to prove that you have been using that trade mark already, and have built a brand around it, for many years prior to the other trade mark’s registration. 

However, preparing this report can involve a lot of work. 

First, you’ll have to collect a significant amount of evidence to demonstrate that your trade mark has been recognised by consumers as an indicator of your business.

And, on top of that, you’ll need a lawyer to prepare submissions to support this evidence. 

Together, these form your Evidence of Prior Use Report that will be examined by IP Australia.

What Happens If I’m Successful?

If all goes well and IP Australia accepts your report, your trade mark can successfully co-exist with the other trade mark.

However, this entire process can be quite costly and a bit of a headache. And, if you’re unsuccessful, you’ll have to re-brand your business entirely.

To avoid this risk, it’s always a good idea to think about trade marks as early as possible. This is why we recommend that businesses apply for a trade mark as soon as they can, before it’s too late.

Need Help?

If you need help putting together an Evidence of Prior Use Report, or want to speak to a lawyer about your options, let’s chat!

You can reach us on 1800 730 617 or at team@sprintlaw.com.au for a free, no-obligations chat about your situation.

Regie Anne Gardoce

Regie is the Legal Transformation Lead at Sprintlaw, with a law degree from UNSW. Regie has previous experience working across law firms and tech startups, and has brought these passions together in her work at Sprintlaw.