The purpose of evidence in a trade mark hearing is to establish facts on which a party wishes to rely. Very often a party will be seeking to establish when a trade mark was first used and/or the extent of use of the trade mark over a period of time.
Trade mark proceedings before the Registrar are decided based on declaratory evidence. Although the Registrar has power to summon witnesses, this power is rarely exercised. Evidence generally consists of declarations with annexed exhibits.
Traditionally, parties supported declaratory claims regarding use of a trade mark by filing business records or other documents relating to their trading activities. For example, invoices, quotations, media articles, and advertisements were particularly probative given they were often clear and dated examples of use of a mark being used in the course of trade.
The advent of e-commerce and social media provides other options for parties wishing to support (or challenge) claims regarding use of a trade mark. Website content is often captured over time by digital archives such as Wayback Machine, and posts on social media pages can often be retrieved from the date an account was first activated. As such, social media accounts and digital archives are powerful resources for establishing both the length and continuity of use of a mark.
The admissibility of evidence from digital archives has been considered in decisions of the Federal Court, and there is scope for such evidence to be challenged in litigation. However, as the Registrar in deciding administrative matters is not bound by strict rules of evidence, delegates have the luxury of being more flexible when considering such evidence and the weight that it should be given.
Generally, unless there is reason to question the accuracy of digitally archived or social media material, it will be taken at face value. However, there are a few things practitioners should keep in mind when including such material as evidence relied on trade mark proceedings.
First, digitally archived web pages are generally highly reliable when it comes to the text content of the website. However, images appearing on the website may not be archived as reliably. As such, if the evidence relates to device or composite marks, its probative value can be strengthened by providing additional material which supports claims that the device or composite appeared on the website on the date/s claimed.
Second, changing a profile image on some platforms (e.g. Facebook) may mean that historical posts also display the same profile picture. As such, if use of the trade mark occurs in a profile picture, a chronology of Facebook posts with that same profile picture is not necessarily an accurate record of when that profile picture was actually used. Again, supporting information (such as posts indicating when profile pictures were changed) should be provided to substantiate when the trade mark was actually used.
Third, some social media platforms will not always clearly state dates of older posts. LinkedIn for example may state that a post occurred ‘2yr’ indicating it was published (very) approximately 2 years prior. Such a date reference may not have necessary specificity required in some cases. Declarants should provide additional information that allows for identification of the actual date of publication.
Fourth, parties should substantiate under whose control a social media account or website is operated This is often not clear merely from looking at extracts of the page or account itself. Proof of actual control is an important (often decisive consideration) in determining whether there has been authorised use of a trade mark within the meaning of the Trade Marks Act 1995, and a failure by a declarant to join the necessary dots can result in evidence being given reduced weight.
Fifth, numbers are important. Website analytics demonstrating traffic to a website can be crucial in determining whether a trade mark displayed on a website has reputation. Similarly, the number of followers or likes that a social media page or post receives can also be probative. Where available, this information should be provided to compliment extracts which display actual use of a trade mark. The more detail that can be provided, the more valuable the evidence. For example, website or social media figures broken down by year are more persuasive than an aggregated figure covering multiple years.
In summary, digital evidence can be crucial in determining the outcome of trade mark proceedings, and delegates of the Registrar will exercise a balanced approach to the assessment of such evidence. However, practitioners should carefully review such evidence with a view to identifying and addressing any obvious ambiguities.
Blake Knowles recently re-joined IP Australia as a Hearing Officer in the Trade Marks and Designs group. Previously, Blake practiced as a trade marks attorney and was a Principal at Spruson & Ferguson and Partner at Cullens. During his time in the profession, Blake acted on behalf of many clients including ALDI, Samsung, Hyundai, Kia, Billabong, and Dominos. Blake has extensive experience in trade mark oppositions, prosecution, clearance searching, and dispute resolution. Before joining the profession, Blake was also a Principal Examiner and team leader during his first stint at IP Australia, and was responsible for authoring parts of the Trade Marks Office Manual of Practice and Procedure. You may connect with Blake via LinkedIn