Preparing An Evidence Of Prior Use Report

In any business, branding is crucial — especially if your business has been established for a significant period. The last thing you want is a competitor capitalising on the brand name you’ve worked tirelessly to build.

Often, the initial step to ensure your brand is safeguarded is by applying for a trade mark.

However, there might be complications with your trade mark application, leading you to receive an adverse report from IPONZ (Intellectual Property Office of New Zealand). 

In some instances, your application might face challenges because there is already a registered trade mark similar to yours.

This can be incredibly frustrating, particularly if you’ve been utilising that brand for many years.

If this occurs, there is a procedure for you to contest this adverse report. We do this by preparing what’s known as an Evidence of Prior Use Report.

What Is Evidence Of Prior Use?

Compiling an Evidence of Prior Use Report involves gathering proof to demonstrate that you have been using the trade mark and have established a brand around it, for many years before the other trade mark’s registration. 

However, assembling this report can be quite laborious. 

Initially, you’ll need to amass substantial evidence to show that your trade mark is recognised by consumers as a signifier of your business.

Additionally, you’ll require a lawyer to draft submissions to corroborate this evidence. 

Together, these constitute your Evidence of Prior Use Report that will be scrutinised by IPONZ.

What Happens If I’m Successful?

If all proceeds smoothly and IPONZ accepts your report, your trade mark can successfully coexist with the other trade mark.

However, this entire process can be quite expensive and overwhelming. And, if you’re unsuccessful, you may need to rebrand your business entirely.

To mitigate this risk, it’s prudent to consider trade marks as early as possible. This is why we advocate for businesses to apply for a trade mark as soon as feasible, before it becomes too late.

Need Help?

If you require assistance with an Evidence of Prior Use Report, or wish to discuss your options with a lawyer, let’s chat!

You can reach us on 0800 002 184 or at [email protected] for a free, no-obligations chat about your situation.

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