4.3.4 The honesty or otherwise of the concurrent use

As stated previously, it is essential that the concurrent use be honest. The necessary standard of honesty has been described as “commercial honesty, which differs not from common honesty”.¹⁰ This means that concurrent registration may not be granted to an applicant who:

• Copied the cited mark, ¹¹ or
• Adopted its mark with the knowledge that the mark was identical or very similar to the cited mark,¹² or
• Used their mark surreptitiously.¹³

It is possible for an applicant to use a mark honestly even if it has knowledge of the cited mark, ¹⁴ for example if the applicant is seeking registration of its company name, by extending its use to another field, without improper motive.

Use may be honest even where the owner of the cited mark is objecting to the application.

To address the issue of honesty, the evidence supplied by the applicant should include an account of how the applicant came to adopt its trade mark.

Footnotes

¹⁰ Parkington & Co. Ltd’s Appn (1946) RPC 171 at 182; see Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 203.

¹¹ Parkington & Co. Ltd’s Appn (1946) RPC 171 at 204

¹² Cohen v Fidler & Co. (1916) 33 RPC 129.

¹³ Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 204.

¹⁴ Re Pirie’s Application (1933) 50 RPC 147