4.3.1 The extent of use in duration, area and volume

The applicant must be able to demonstrate honest concurrent use prior to the date that its application was filed.

There is no set rule as to the minimum period of concurrent use necessary to lead to registration.⁶ A substantial period of use must generally be shown. In some circumstances a shorter period may be acceptable.⁷ The extent of use required is directly proportional to the degree of confusion that is expected to arise due to the similarity of the trade marks.

The applicant’s trade does not need to have been greater in volume than the trade under the cited mark; however the evidence should demonstrate that the applicant’s trade mark has real commercial value.⁸

From a practical perspective, the more use of its mark that an applicant can demonstrate, as evidenced through sales figures for example, the stronger that applicant’s case will be.

Footnotes

⁶ Re Pirie’s Application (1933) 50 RPC 147 at 212; Peddie’s Application (1944) 61 RPC 31 at 36.

⁷ See Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 204, for case examples.

⁸ See Granada Trade Mark [1979] RPC 303.