Before filing a trade mark, it is important to establish whether it has previously been used in the market in which you intend to trade. In other circumstances, a client may wish to establish that a mark has not been in continuous use in the past three years in order to support a non-use action. Alternatively, a client may need evidence of actual use in the marketplace in legal proceedings.

"Application for removal of trade mark from Register

(2) The application:

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered."

Establishing such use is usually easy if one is attempting to show current use, however historical use can be problematic. When investigating the historical use of a mark, the first port of call is often with the client, the owner of the trade mark. Many clients keep accurate historical records of use of their marks, however mergers, changes of ownership and indeed changes of staff within an organisation, can make obtaining that evidence problematic. Similarly, when considering use by a third party, it is often not possible to access their historical records to show the nature and extent of previous use of a mark.

Investigators will take a multi-pronged approach to establishing historical use. This may include:

(a) Consulting the company records

(b) Conducting general and specific internet searches

(c) Looking at trade journals and newspaper articles

(d) Reviewing historical company annual reports

(e) Accessing market research data

(f) Interviewing market users and suppliers

(g) Accessing historical shopping research databases (e.g. Mintel).

Food and beverages are one of the most common type of products that require this type of investigation. The often rapid turn-over of product marks in this space makes it difficult to know when, where and how a mark may have been used. Typically this includes:

(a) How the mark was used

(b) The type of packaging, including images

(c) When the use commenced and when the use ceased

(d) Where the product was purchased and where the product was available

(e) Sales figures on the sale of the product

(f) Cost of the product when on sale.

Research will often generate leads, and depending on the nature of the product of interest, specific resources can be used to obtain this information.

While this approach is ideal for examining the historical use of registered trade marks, it can also be a valuable approach in examining the historical use of what is known as 'common law' marks. That is, marks that have been in use in the marketplace, but formal registration with the Australian Trade Marks Office (IP Australia) has never occurred. We often see 'common law' marks in food, beverage and fashion goods, which is often due to their short marketing life span.

We utilise in-house registered private agents to track down relevant information, which clients can use in legal proceedings. Our considerable expertise in this area means that clients can rest-assured that if there is information to be found about use of trade marks, we will find it.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.