Preparing An Evidence Of Prior Use Report

If you’ve received an adverse report (also called an examination report) on your Australian trade mark application, don’t panic. In many cases, you can respond by showing that you were genuinely using your brand before the cited mark or before your application date. This is where an Evidence of Prior Use report comes in.

Putting strong, well-organised evidence before IP Australia can be the difference between registration and refusal. The good news? With a clear plan and the right documents, you can prepare a persuasive package that addresses the examiner’s concerns and keeps your brand strategy on track.

In this guide, we’ll explain what Evidence of Prior Use means in Australian trade mark practice, when it’s needed, what to include, and a practical, step-by-step approach to preparing your report.

What Is Evidence Of Prior Use (In Australian Trade Mark Law)?

Evidence of Prior Use is material you provide to IP Australia to show you were using your trade mark for your goods or services before a relevant date (often before the filing date of a cited mark or before your own filing date if the objection is about capacity to distinguish).

Why it matters: if an examiner raises a citation or says your mark isn’t sufficiently distinctive, proving real-world use-by you, in Australia, for the relevant goods/services-can help overcome those objections. It demonstrates that the mark has operated as a “badge of origin” for your business and that consumers associate it with you.

This process sits within the broader trade mark prosecution pathway. If you’re still exploring protection for your brand, it’s also worth considering when to register your trade mark and how prior use may support your strategy.

When Do You Need An Evidence Of Prior Use Report?

Typically, you’ll prepare Evidence of Prior Use in response to an examination report that raises:

• A citation under relative grounds (e.g. a similar earlier mark), where you may rely on honest concurrent use or prior continuous use.
• An objection that your mark is not capable of distinguishing your goods/services (e.g. descriptive terms), where you may rely on acquired distinctiveness through use.

You’ll receive a letter from IP Australia setting out the issues and the deadline to respond (usually 15 months from the examination date). Your Evidence of Prior Use report forms part of your response package and should be accompanied by a persuasive submission that ties the evidence to the legal tests.

If you’ve been issued an examination report, tailored trade mark adverse report advice can help you assess whether prior use is the best strategy, or whether you should amend, limit, or consider a different mark.

What Should Your Evidence Pack Include?

Strong evidence is concrete, dated and connects your mark to the exact goods/services in your application. Aim for breadth (different types of documents) and depth (consistent use over time).

Core Evidence Types

• Invoices and Sales Records: Dated documents showing sales in Australia where the mark appears on invoices, order confirmations or receipts.
• Marketing Materials: Flyers, brochures, catalogues, social ads, sponsored posts, and campaign reports with dates and targeting that align with your goods/services.
• Website And Online Evidence: Screenshots with timestamps (Wayback captures, CMS publishing logs), analytics showing traffic, and online store listings using the mark.
• Product Labels And Packaging: Photographs of packaging, swing tags, or labels showing the mark on or attached to the goods.
• Social Media Posts: Posts and ads showing the mark in use, with platform timestamps and performance metrics where possible.
• Press And Publicity: Articles, reviews, features, awards or event materials that reference the brand.
• Contracts And Business Documents: Supplier agreements, distribution agreements or proposals that show the mark in the course of trade.

Statutory Declarations

Your evidence should be anchored by a statutory declaration from a person with direct knowledge of the brand’s use (often a director or marketing lead). The declaration should:

• Identify the declarant’s role and how they know the facts.
• Explain the history and timeline of use in Australia (first use date, continuous use, geographic scope).
• Describe how the mark appears (exact spelling, stylisation, logos) and on which goods/services.
• Attach exhibits (labelled, paginated) and cross-reference them clearly in the text.
• State sales volumes, advertising spend and customer reach where possible, with a breakdown by year.

If multiple team members or distributors have complementary knowledge, consider additional declarations to cover gaps (e.g. a distributor for regional sales or an agency for digital ad spend).

Show The Right Kind Of Use

Use must be “as a trade mark” (i.e. as a badge of origin), not merely descriptive. Examples:

• GOOD: The mark used prominently on packaging, product pages and signage to identify your brand.
• RISKY: The mark appearing only as part of a sentence describing a product feature or category.

If your use differs from the applied-for mark (e.g. logo vs word mark, hyphenation, added words), explain why the differences are not substantial and that consumers still see the same sign as the badge of origin.

How To Prepare An Evidence Of Prior Use Report (Step-By-Step)

1) Read The Examination Report And Identify The Issues

List each objection and the legal basis (citation vs distinctiveness). Note exactly which goods/services are affected, and the response deadline. If needed, get early input from an intellectual property lawyer so you’re targeting the right tests and using the right language in your submission.

2) Define The Timeframe And Scope Of Use

Work out the earliest use of the mark in Australia and any continuous use up to now. Build a month-by-month or year-by-year timeline so the story of your brand is clear and consistent.

3) Collect, Date-Verify And Organise Evidence

Gather documents that show the mark used on or for the relevant goods/services. Prioritise items with independent timestamps (invoices, platform logs, third-party media). Save everything to a folder structure that mirrors your story (e.g. “2019 launch”, “2020 retail rollout”, “2021 online expansion”).

4) Map Evidence To Goods/Services And To Each Objection

Create a simple index that ties each exhibit to specific goods/services in your application and to the paragraph of your declaration that references it. This makes it easy for the examiner to follow the chain of proof.

5) Draft Your Statutory Declaration

Write in clear, plain English. Use headings like “Background”, “Timeline Of Use”, “Marketing And Sales”, “Geographic Reach” and “Consumer Recognition”. Cross-reference exhibits in brackets (for example: “see Exhibit 4 - March 2021 product brochure”).

6) prepare High-Quality Exhibits

Label each exhibit (Exhibit 1, Exhibit 2, etc.). Include full-page screenshots and legible scans. Where an image alone could be ambiguous, add a short caption describing what it is and why it matters.

7) Draft The Submission Linking Facts To Law

Alongside your declaration, include a brief submission that explains how your evidence satisfies the relevant legal pathway (e.g. prior continuous use; honest concurrent use; acquired distinctiveness). Address similarities/differences with the cited mark, overlap of goods/services, and why consumer confusion is unlikely in practice given your established presence.

8) Consider Strategic Adjustments

• Narrowing Goods/Services: If some items are weak on evidence, consider limiting your specification to where your use is strongest.
• Amending The Mark: If your mark is overly descriptive, small tweaks or stylisation might help-balanced against brand strategy.
• Parallel Filing: In some cases, you may file a new application in a different class or for a refined specification while you prosecute the original.

If your evidence strategy isn’t straightforward, a short trade mark consultation can help you decide whether to press on with prior use, explore honest concurrent use, or take another route.

9) Execute, File And Track

Arrange for the declaration(s) to be properly witnessed in line with your state/territory requirements. Lodge your response via IP Australia’s portal with all exhibits attached. Keep a copy of the full pack and a clean index for your records.

Practical Tips, Timing And Common Pitfalls

Timing: Start Early And Work Back From The Deadline

Evidence packs take time. Give yourself a runway for collecting documents, drafting declarations, internal approvals and final execution. If you’re close to the deadline, consider requesting an extension-don’t leave it to the last week.

Consistency: Align Your Story, Mark And Goods/Services

The biggest strength of your report is a consistent story: the same mark, used the same way, for the same goods/services, over time. If there are changes in the mark (e.g. older logo), address them explicitly and explain continuity.

Quality: Prefer Independent, Contemporaneous Records

Objective, date-stamped materials carry more weight than undated or internally created documents. Supplement internal docs with third-party sources wherever possible.

Clarity: Make It Easy For The Examiner

Use a clean index, clear exhibit labels and short, signposted paragraphs. The easier it is to navigate your materials, the stronger your position.

Pitfalls To Avoid

• Only Providing Undated “Evergreen” Materials: Always include dates and context.
• Relying On Use Outside Australia: You need Australian use (even if you also trade overseas).
• Using The Mark Descriptively, Not As A Badge Of Origin: Emphasise brand use, not just descriptive text.
• Ownership Gaps: If your brand moved between entities, include documents that explain chain of title (for example, an IP assignment if ownership transferred).
• Forgetting To Link Evidence To Goods/Services: Tie each exhibit to the relevant items in your application.

Strategy: When Evidence Of Prior Use Isn’t Enough

Sometimes, prior use won’t overcome the objection (e.g. the mark is highly descriptive or the cited mark is very close and widespread). At that point, consider whether to rebrand, refine the specification, or negotiate coexistence. Where an examination report is complex, our team can help with a targeted response and, where appropriate, a full Evidence Of Prior Use preparation service.

If your application is still early, you might also consider a risk-checked pathway like Trade Mark Headstart to identify issues before committing to a full filing.

Key Takeaways

• Evidence of Prior Use can overcome certain trade mark objections by proving real, continuous use of your brand in Australia for the relevant goods/services.
• Your pack should include a clear statutory declaration, dated exhibits (sales, marketing, online, packaging) and an index that maps evidence to the issues.
• Focus on use “as a trade mark” and ensure consistency between the mark, the goods/services and your story over time.
• Start early, prioritise independent, contemporaneous records and avoid common pitfalls like missing dates or ownership gaps.
• If an examination report is complex, tailored adverse report advice and an IP lawyer can help you choose the strongest path, whether that’s prior use, honest concurrent use, amendment or re-filing.
• Keep your broader brand strategy in view-sometimes the best move is to refine your filing approach or pair evidence with a fresh application for long-term protection.

If you’d like help preparing an Evidence of Prior Use report or responding to an examination report, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.