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How to Prove Honest Concurrent Use of a Trade Mark

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.

Examiners will often provide a summary in the examination report to explain why they believe the conflict exists. For example, the examiner may state that your trade mark closely resembles an earlier one because it shares the same memorable element. Therefore, there is a risk of consumer confusion.

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.

If you chose your trade mark dishonestly, having known about the conflicting mark and the risk of confusion, you might not be able to rely on honest concurrent use as a method to overcome the conflict objection raised.

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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.

When compiling evidence to support your arguments, ensure that the dates are clearly shown on the documents.

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

Can I file evidence of honest concurrent use without the assistance of a lawyer?

You may prepare and file evidence of honest concurrent use on your own. However, it may be more appropriate to seek legal assistance if you are unsure about the process, and types of evidence to include or would like to discuss the prospects of success by submitting this kind of evidence.

How much time do I have to prepare and file evidence of honest concurrent use?

You can find the ‘acceptance deadline’ on the first page of the adverse examination report. This is the deadline for overcoming any issues raised on your application. When filing evidence, however, be mindful that it can often take more than a month for the examiner to respond to your evidence. As such, we would recommend that you file the evidence as soon as possible.

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Michelle Yang

Michelle Yang

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