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4.3 Assessing whether use exists
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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.
4.3.2 The degree of confusion likely between the marks in question
The more likely it is that the public will be confused if the applicant’s mark is registered alongside the cited mark the weaker the applicant’s case is for concurrent registration. The public interest must be considered.
The entire scope of the registration must be considered. Consideration should not be limited to how the mark is currently being used.
The degree of confusion is likely to be greater if the trade mark is very distinctive in relation to the goods or services.
4.3.3 Whether any instances of confusion have in fact occurred
The applicant’s case for honest concurrent use is stronger if there has been no instance of actual confusion. In Re Pirie’s Application 9 it was stated that a lack of proof of confusion “cannot be regarded as unimportant even though allowance be made for difficulty of proof”.
Footnote
9 See section 208(3)(a) of the Trade Marks Act 2002.
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
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.
