How to Prove Honest Concurrent Use of a Trade Mark

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Table of Contents

• Section 44 Objection: Conflict with Existing Trade Marks
• Honest Concurrent Use
• Declaration of Honest Concurrent Use
• Key Takeaways
• Frequently Asked Questions

If you filed a trade mark application with IP Australia, you could receive a list of issues raised against your application. For instance, the examiner may raise a section 44 objection against your trade mark. However, in this case, the examiner will likely include suggestions on how you can overcome these issues. Additionally, depending on the circumstances, you may overcome this objection by supplying evidence of honest concurrent use. This article will discuss when it is appropriate to file evidence of honest concurrent use, the kind of evidence you should include, and how you should supply it.

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Section 44 Objection: Conflict with Existing Trade Marks

A section 44 objection means the examiner views your mark as ‘substantially identical’ or ‘deceptively similar’ to one or more existing trade marks on the Register. If an examiner has raised this objection to your trade mark application, they will list the cited trade mark number in the examination report. In addition, by clicking on the hyperlink they provide, you will see the trade mark registration that the examiner has raised as a conflict with your application.

Under the heading ‘What You Can Do Now’, you will notice that the examiner provides one or more options to attempt to overcome the objection. For example, for a section 44 objection, it is common for the examiner to suggest supplying evidence of honest concurrent use or prior use.

Honest Concurrent Use

Supplying evidence of honest concurrent use would be relevant where you honestly adopted your trade mark. Additionally, you can do this where you have used the mark for a significant period concurrently with a conflicting mark without any consumer confusion arising. However, you must establish your use of the trade mark in Australia before applying for trade mark protection.

Declaration of Honest Concurrent Use

It is essential to note that you will need to provide evidence in the form of a declaration. A sample declaration form can be seen on the IP Australia website.

Generally, your declaration should include: 

• the date you chose the trade mark;
• why you chose the mark;
• whether you were aware of the earlier mark when you chose the trade mark;
• whether you are aware of any instances of confusion between your mark and the conflicting mark;
• the date you first used the trade mark in relation to the claimed goods and services covered in your trade mark application;
• whether you have used the trade mark continuously, and if not, the date range that the mark was used;
• the states within Australia that the mark was used in;
• the goods and services sold using the trade mark;
• evidence of the trade mark being used to sell the goods and services (e.g. photographs of product packaging, advertising materials, website);
• your annual turnover figures for goods and services sold using the trade mark;
• annual figures spent on promoting the trade mark; and
• any other information to show how you have used the trade mark in relation to the claimed goods and services on your application.

Key Takeaways

If you have received an adverse examination report from IP Australia concerning your trade mark application, you may consider filing evidence of honest concurrent use. However, determining whether this option is appropriate for your circumstances is an excellent first step. You should also consider the evidence needed to establish honest concurrent use, as stated above.

If you would like assistance with preparing and filing honest concurrent use, 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 for a low monthly fee. So call us today on 1800 534 315 or visit our membership page.

Frequently Asked Questions