What happens if someone else is already using a similar trade mark, but I’ve been using mine too, honestly and for years? This is exactly where the concept of honest concurrent use comes into play. It’s a fascinating part of trade mark law in Australia that allows the Registrar to accept a trade mark application even if it conflicts with an earlier mark, in certain circumstances.
What is Honest Concurrent Use?
In Australia, under Section 44(3)(a) of the Trade Marks Act 1995, an application may still be accepted even if there is a conflicting earlier mark, provided the applicant can show honest concurrent use. That means that, if two businesses have, in good faith, been using similar trade marks in the market for some time, the law recognizes that sometimes both should be allowed to continue.
This doctrine developed back in the day when business was mostly local, two traders might innocently adopt similar marks in different geographic areas. Today, even with national and global marketplaces, the principle still holds when two businesses have both built goodwill under similar marks, without deception or bad faith.
How Do We Prove Honest Concurrent Use?
In deciding whether to accept an application under this rule, the Registrar considers five key factors, drawn from case law and long-standing practice. It includes-
The degree of likely confusion between the marks-
Even if the marks are quite similar and could cause confusion, the Act allows for registration in cases of genuine honest concurrent use. Of course, the closer the marks (and the goods or services they cover), the greater the scrutiny. If, say, two companies are selling similar products under very similar marks in the same region, more convincing evidence will be needed.
Whether actual confusion has occurred in the market-
Interestingly, the existence of actual marketplace confusion isn’t fatal to your case. You can still succeed under this provision even if some confusion has happened. Although the more confusion there is, the harder it will be to argue your case. If you’re applying, it helps to state clearly whether you are aware of any actual confusion to date.
The honesty of the applicant’s use of their trade mark-
This is the main part of the matter. You must prove that your use of the trade mark was honest, not sneaky, deceptive, or opportunistic. It’s not enough to simply claim “I was honest.” You must show why and how you adopted the trade mark, what steps you took to check whether it was available, and whether you had any knowledge of the earlier mark when you started using yours. In the age of Google and searchable online trade mark databases, courts expect that a reasonable business owner would take basic steps to check for prior trade marks. Failing to do so can count against you.
The extent of use, how long, where, and how much the trade mark has been used-
How long have you used the mark? Where? How widely? How well known is your use? Generally, several years of consistent use in the marketplace is persuasive. For example, if you’ve used your mark continuously across Australia for 10 years, that’s a strong case. On the other hand, using a mark for a few months before filing an application is unlikely to suffice. That is no matter how big your marketing budget. The evidence should show real commercial value and goodwill and not just a token effort.
The relative inconvenience to both parties if registration is refused or allowed-
Finally, the Registrar will consider the inconvenience to both sides. If rejecting your trade mark would force you to abandon valuable goodwill built over many years, that weighs in your favor. Conversely, the earlier trade mark owner may also suffer harm if you are allowed to register and continue use. In other words, it’s a balancing act.
What Kind of Evidence Do I Need?
Well, the quality of your evidence is critical here. The more clear, comprehensive, and well-documented your use, the better your chances. At a minimum, you should provide-
- A declaration explaining why and how you adopted the mark, and what searches or checks you made beforehand
- Evidence of when you started using the trade mark in Australia
- Examples of the trade mark in use on goods, services, advertising, and packaging
- Sales data, marketing spend, and details of the market and customer base
- Geographic spread of your use
- A clear statement about any known confusion
- Good faith must be demonstrated, not merely claimed.
If successful, registration under honest concurrent use gives you powerful rights to continue using your mark and can help prevent future conflicts or legal disputes. But it’s not automatic, and the Registrar won’t take it lightly, because it potentially limits the rights of the earlier mark’s owner. If you’re considering applying under this provision, or if an examiner has cited a conflicting mark against your application, getting sound legal advice early on is key.
Final Thoughts
Each case is unique, and the stakes can be high. If you’ve been trading under your mark honestly, but someone else holds an earlier registration, don’t panic. This doctrine exists to protect legitimate, good-faith businesses. If you’d like to chat about your particular situation, feel free to get in touch with our team. We’re always happy to help unravel the complexities of trade mark law. This helps ensure your brand has the protection it deserves.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
