Honest Concurrent Use and Prior Use as Grounds for Acceptance

When applying for a trade mark in Australia, a common roadblock is running into existing trade marks that are considered too similar to your own. Under section 44 of the Trade Marks Act 1995, IP Australia may reject an application if your trade mark is substantially identical or deceptively similar to an earlier mark covering similar goods or services. But all is not lost. Two key defenses, i.e. honest concurrent use (s 44(3)(a)) and prior continuous use (s 44(4)) can potentially keep your application alive.

Honest concurrent use under sec44(3)(a)

Let’s say you’ve used your trade mark in good faith for years, unaware that someone else had registered a similar one earlier. You’ve built goodwill, established a reputation, and haven’t caused confusion in the market. This is where honest concurrent use comes into play.

The idea behind this defense is that, in certain situations, two traders can both use similar trade marks without creating an unacceptable level of public confusion, i.e. especially if both have used them honestly and concurrently for a significant time.

The Legal Test

The Registrar looks at five core criteria when considering an honest concurrent use claim-

• The degree of confusion likely between the marks– This isn’t just about similarity in name or logo, i.e. it’s also about how the goods or services are marketed, the customers targeted, and whether the marks operate in the same geographical area. High similarity doesn’t automatically disqualify you, but it does raise the bar.
• Whether actual confusion has occurred– If you’ve used your mark in the marketplace and have no known instances of consumers mixing you up with the other party, that works in your favor. A simple declaration confirming no known confusion is usually sufficient at the examination stage.
• The honesty of adoption and use– This is non-negotiable. If you knew about the earlier mark and copied it deliberately, i.e. even subtly, your application will likely be refused. Courts have made it clear that lack of proper diligence (like failing to run searches or ignoring results) can cast doubt on your honesty. Ignorance alone isn’t enough.
• Extent of use, i.e. duration, area, and volume– The more consistent, widespread, and substantial your use, the better. For example, a trade mark used across several Australian states for five years with steady turnover is more persuasive than one used lightly in a single suburb for six months.
• Relative inconvenience to the parties– The Registrar will consider the hardship you’ll face if your mark is denied, i.e. especially if your brand already has significant goodwill. At the same time, the risk of disruption to the earlier rights holder also matters. It’s a balancing act.

To support your claim, you’ll need-

• A declaration from a senior person in your business outlining how, when, and where the mark has been used.
• Examples of marketing materials, invoices, product packaging, website screenshots, i.e. anything that shows real-world use.
• An explanation of how the trade mark was adopted, including whether searches were conducted.
• Clear identification of the goods/services and the geographic areas where the mark has been used.
• A statement confirming whether you’re aware of any confusion occurring in the marketplace.

We often advise clients to start assembling this evidence early, even before objections are raised. Getting ahead of it can save months of delay later on.

Prior Use under sec44(4)

Honest concurrent use isn’t your only fallback. If you were using your trade mark before the other party filed their application (and you’ve continued to use it up until your own application), then you may qualify under the prior use defense.

This provision is narrower but, in some ways, stronger, because if you can prove it, the Registrar must not reject your application on the basis of the earlier mark.

Key Requirements

You’ll need to show-

• You used the trade mark in Australia before the priority date of the conflicting earlier mark.
• Your use has been continuous up to the priority date of your own application.
• The use relates to goods/services that are the same or closely related to those in the earlier mark.
• There’s no requirement to prove reputation or goodwill. The extent of use doesn’t matter much, i.e. what matters is that the use was genuine, in trade, and continuous.

Evidence Essentials

Again, declarations are key. You’ll need to show-

• When the mark was first used (with supporting documentation like dated invoices, website listings, photos, advertising).
• That the use didn’t stop during the relevant period.
• That the use was real and commercial, i.e. not token or internal.

Vague statements like “we’ve used the mark since 2010” won’t cut it. We help clients present hard evidence that connects the dots clearly for the examiner.

Common mistakes to avoid

In our experience, these are the most frequent reasons these defenses fail-

• The burden of proof is on you. A few old brochures or a logo on a shelf won’t be enough. Build a thorough, chronological picture.
• If you didn’t bother to search the trade marks register or even Google before adopting your brand, that can really hurt your credibility, i.e. especially under s 44(3)(a).
• If your evidence only covers one product but your application claims a whole class of goods, your mark might get rejected or restricted. Tailor your claims to match your real-world use.
• Especially for honest concurrent use, courts and examiners tend to expect several years of genuine use. Use under a year, unless it’s incredibly extensive, rarely makes the cut.

So which defense is better?

It depends on your situation. If you’ve genuinely been using your mark before the other party filed theirs and your use was continuous, prior use under sec 44(4) is usually the stronger option. It’s cleaner, less subjective, and doesn’t require showing reputation or market impact.

But if your use started after theirs, or if the earlier mark had already built up some presence, honest concurrent use under s 44(3)(a) may be your only path forward.

Building a solid case under either of these provisions takes strategic planning, legal insight, and attention to detail. At our firm, we don’t just hand you a checklist, we work with you to craft a compelling narrative that fits within the legal framework.

Whether it’s guiding you through the evidence, reviewing your trade mark history, or dealing directly with IP Australia, we’re here to take the stress out of the process and maximize your chances of securing that registration.

If you’ve received an objection or are worried that your brand might conflict with an existing mark, reach out to us. The sooner we start preparing, the stronger your case will be.

Let’s protect your brand, the smart way.