What is Honest and Concurrent Use of a Trade Mark?

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Table of Contents

• What is Honest Concurrent Use?
• Criteria For Honest and Concurrent Trade Marks
• Evidence 
• Form to Submit Evidence 
• Opportunity to Respond 
• Key Takeaways
• Frequently Asked Questions

Applying to register a trade mark is the first step in protecting your brand, but sometimes, you may not be successful because of a conflict objection. When this happens, you may overcome it by amending your application. Other times, the trade marks may be identical or very similar for the same or similar goods and services and you need to consider alternative options to get your trade mark over the line. One exception you can argue in response to a conflict objection is if there has been honest concurrent use of your trade mark. This article will explore the key things you need to know about the honest concurrent use of trade marks.

What is Honest Concurrent Use?

The rationale behind the exception of honest concurrent use is that traders have honestly adopted a trade mark. Accordingly, it is not the product of wrongful conduct or intention to deceive customers. The exception recognises that in some cases, two traders may have legitimately adopted the same or similar marks independently and in good faith, perhaps without prior knowledge of the other’s use. Rather than invalidating one party’s rights, the law may allow both trade marks to co-exist under certain conditions. This prevents an unfair burden from falling on an honest trader who was using their mark properly. 

Hypothetical Example

For example, Betty owns a cake shop and has been operating under the brand CAKES GALORE for several years. Betty predominantly sells pre-made and freshly baked cakes under CAKES GALORE. Betty’s business is growing and becoming more successful. Accordingly, she wants to obtain trade mark registration for CAKES GALORE to protect her brand name and intellectual property. Betty applies for registration, but she receives a rejection because there is another trade mark on the register for CAKEZ GALORE. A search reveals that this this trade mark owner has also been using this trade mark for several years and sells cake batter, mixes, and different sorts of flour under this brand. To overcome this objection raised, Betty may consider submitting evidence of honest concurrent use of her CAKES GALORE trade mark.

Criteria For Honest and Concurrent Trade Marks

There are five key factors a decision maker will consider when determining whether trade mark use has been honest and concurrent. Namely: 

1. the degree of confusion likely between the trade marks in question; 
2. whether consumers in the marketplace have confused the two businesses;
3. the honesty or otherwise of the concurrent use of the trade marks;
4. the extent of use in duration, area and volume; and 
5. the relative inconvenience to the respective parties if the applicant’s trade mark should be registered or not registered. 

However, the decision maker does have a degree of discretion when making a decision. Accordingly, they may consider other circumstances beyond the above list. For example, they may look at the commercial relationship between the parties or evidence on consumer perceptions in the industry.

Evidence 

Depending on your situation and the similarities between the trade marks, you may need to submit substantial evidence to prove honest concurrent use successfully. However, understanding what type of evidence will be useful can take time and effort. That is why it is important to seek advice from a lawyer who can help identify what type of evidence you need based on the situation, assist you in collating that evidence, and generally advise on your prospects of success. 

Broadly, the evidence you submit must show that you:

• chose your trade mark honestly;
• used the mark concurrently with any conflicting trade mark;
• used the mark in Australia before an application was lodged in Australia; and
• used the same trade mark that you have applied for in your application (without any major changes).

Relevant evidence could include dated business and financial records, advertising and marketing materials, and any intellectual property records.

Form to Submit Evidence 

Evidence submitted to IP Australia for consideration must be via a declaration. Additionally, you must submit it electronically through the online services portal. 

The declaration must also state that the person making the declaration believes the statements contained in the declaration to be true and correct, and that person must sign it.

There are other standard requirements of the declaration, such as specific formatting and statement requirements, that you can discuss with your trade mark lawyer. 

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Opportunity to Respond 

Suppose IP Australia accepts your application for registration based on the evidence you have supplied. The owner of the prior trade mark will receive notification that your application has proceeded to acceptance based on your evidence. The owner will then have the opportunity to oppose your trade mark application from proceeding to registration by filing a notice of intention to oppose.

If an opposition is filed, both parties can submit further evidence in support or answer of the objection. The type of evidence provided will typically depend on the grounds of the opposition. Following this, either party may then request a hearing where oral and written submissions can be made, before a decision is issued.

Key Takeaways

Supplying evidence of honest concurrent use is a way to overcome a conflict objection raised by IP Australia, namely if your trade mark application is initially refused on the basis that your trade mark is the identical or similar to a trade mark already on the register for the same or similar goods and services. 

If you have any questions about trade marks or if you would like assistance with applying for trade mark registration our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on [numbers] or visit our membership page.

Frequently Asked Questions