4.3 Assessing whether use exists

There are various factors to be taken into account when assessing whether a case of honest concurrent use exists that justifies the registration of a mark pursuant to section 26(b) of the Act. These factors are drawn from the decision of the House of Lords in Re Pirie’s Application⁵ and have been summarised as follows:

• The extent of use in duration, area and volume;
• The degree of confusion likely between the trade marks in question;
• Whether any instances of confusion have in fact occurred;
• The honesty or otherwise of the concurrent use;
• The relative inconvenience that would be caused to the respective parties if the applicant’s trade mark were registered.

Each of these five factors is considered below.

When assessing whether a case of honest concurrent use exists, the examiner must take careful note of the exhibits accompanying the applicant’s declaration. Insofar as the goods/services of the applicant’s mark conflict with the goods/services of the cited mark(s), the specification must be limited to the goods/services for which use has been shown.

Footnote

⁵ (1933) 50 RPC 147 at 159.