5. Other special circumstancesUp one level
Pursuant to section 26(b) of the Act, a trade mark may proceed to registration where “other special circumstances” exist that, in the opinion of the Commissioner or the Court, makes it “proper” for the trade mark to be registered.
As with honest concurrent use, this condition depends on commercial realities which, in the Commissioners opinion, justify registration not withstanding a real risk of deception and confusion.
In Berlei Bali Limited v Bali Brassiere Co Inc (1968) 118 CLR 128, Fox J stated:
Section 12(2) [of the 1938 UK Act] is dealing with special circumstances. Thus, it refers to the “case of honest concurrent use, or of other special circumstances”; it is dealing with special circumstances which justify taking the case out of the ordinary rules so that justice may be done to the applicant.
Honesty of use is still essential. However, applications which fail to overcome citations on the basis of use may be able to overcome them because of “other circumstances”.