4.3.5 Relative inconvenience to parties

The relative inconvenience caused to each owner should be weighed up and taken into account when considering whether it would be proper to register the applicant’s mark based on honest concurrent use.

If the applicant is unsuccessful in its attempt to obtain registration based on honest concurrent use, the inconvenience caused to that applicant may include:¹⁵

• Exposure to infringement proceedings.
• Loss of goodwill.
• The necessity to adopt a new trade mark.

If the applicant is successful in its attempt to obtain registration based on honest concurrent use, the inconvenience caused to the owner of the cited mark may include:¹⁶

• Diversion of trade due to confusion in the marketplace.
• The need to re-label products to minimise confusion.
• Dilution of its rights in the trade mark.

Footnotes

¹⁵ Shanahan, Australian Law of Trade Marks and Passing Off, 2nd edition, 1990, at page 206.

¹⁶ Ibid, page 206.