After you apply to have IP Australia enter your trade mark into the register, another party may challenge your mark. If this happens, you’ll generally need to provide evidence of trade mark use to overcome the other party’s objection. Evidence of trade mark use includes proof that your company is using – or has plans to use – the trade mark in relation to the class of goods and services referred to in your application. This article will explore the grounds for challenging a trade mark application and the types of evidence you can provide to prove trade mark use.

Grounds for Challenging a Trade Mark Application

In Australia, a party may raise an objection under either section 41 or 44 of the Trade Mark Act 1995 (Cth) (the Act).

Section Objection Proof Required
41 Distinctiveness Prove that your trade mark can distinguish your goods or services in the marketplace.
44 Identical or Deceptively Similar Prove that the trade marks can co-exist without consumer confusion in the marketplace

Types of Evidence You Can Provide

Generally speaking, any evidence that you provide must demonstrate that you are using the sign as a trade mark, during the course of trade. In other words, you must be using the sign as a badge of origin, which consumers view as synonymous with the goods/services. The sign must indicate that you are the provider of the goods/services.

You can prove use by providing different types of evidence, including by presenting information about the history of your trade mark and how your business had incorporated the sign into your marketing strategy.

Confectionary giant Cadbury has, for instance, controversially obtained a trade mark registration for the colour purple (or at least a shade of purple). They then attempted to prevent a competitor, Darrell Lea, from using a similar shade of purple in their packaging, claiming that Darrell Lea’s actions amounted to them ‘passing off’ their product as Cadbury’s.

One of the issues that came up in the case was whether or not Cadbury really ‘owned’ the shade of purple. In defending their use of purple as a trade mark, Cadbury pointed to a number of factors. Although they were ultimately unsuccessful in preventing Darrell Lea from using the shade of purple, they did successfully establish that purple was an integral part of Cadbury’s branding by pointing to the following:

  • Cadbury has been using purple as part of their packaging since the 1920s;
  • Purple moved from being mainly associated with Cadbury’s Dairy Milk chocolate to being associated with all of their moulded blocks of chocolate in 1992;
  • Purple is part of Cadbury’s ‘’Masterclass branding’’ strategy, which attempts to achieve worldwide cohesion;
  • Cadbury provided retailers such as Coles and Woolworths with ‘planograms’ (directions for how the supermarket giants were to display their goods in store) that involved the creation of a ‘purple bullseye’;
  • Cadbury products were often sold in purple bins or display baskets;
  • Purple featured heavily in all of Cadbury’s sponsorship endorsements, including sponsorships at the Australian Open;
  • Cadbury’s ads, including the iconic ‘’Wouldn’t it Be Nice’’ have all featured chocolate; and
  • According to market research, consumers were far more likely to associate Cadbury chocolates with purple than other brands of chocolate.

The reason why Cadbury’s defence ultimately failed was that they did not persuade the Court that they used purple with the Cadbury brand. Purple, the Court noted, might appear extensively, but also tended to appear in conjunction with other relevant signs, including cursive lettering that read ‘Cadbury’. Interestingly, the Court also said that it would have been highly persuasive to see evidence that indicated actual consumer confusion should a competitor use the colour purple.

Key Takeaways

  • If someone challenges your trade mark application, you will need to provide evidence that shows ‘use’ of the sign in question as a trade mark.
  • Another party may challenge your trade mark either because it is deceptively similar to another trade mark or isn’t distinctive enough to be understood as a trade mark.
  • You can use a variety of evidence to prove use, including the history of the trade mark, the length of time that it’s been in use, the extent to which it features in marketing campaigns etc.