28.1. Introduction

Subsections 44(1) and (2) set out the circumstances in which grounds for rejection must be raised where conflicting trade marks are identified. Subsection 44(3) and (4), identify certain circumstances where applications may be accepted in the face of conflicting trade marks. Subsection 44(3) refers to the concept of "honest concurrent use" of the trade mark as well as "other circumstances" which may allow acceptance. Subsection 44(4) looks at the circumstance where the applicant has continuously used its trade mark for a period before the priority date of the conflicting mark up until at least its own priority date (prior use).  

The examiner must, under both ss 44(3) and 44(4), be ‘satisfied’ of various matters - for example, that the trade mark has been used in the marketplace. A declaration made by the applicant can be taken at face value when it goes to simple facts, such as the date on which an advertisement appeared in a newspaper.  However, the declarant’s statements of opinion on the precise matters of which the examiner is to be satisfied carry little weight. For example, a statement that “my use has been honest” does not carry any great weight. This should be contrasted with a statement that shows why a trade mark was adopted and when the applicant first learned of the existence of a conflicting trade mark. The latter provides a factual basis from which an examiner can be satisfied of honesty, the former does not. Similarly, if the examiner is to be satisfied that prior use has been established, such use must be demonstrated by the provision of evidence, not by bald statements of use.

Both honest concurrent and prior use require the applicant to submit information in an attempt to satisfy the Registrar that it is appropriate to allow acceptance. Such information should be provided in electronic format via the online services page. Providing clear digital images of any objects bearing the trade mark will be as effective as providing the objects themselves.

The decision to accept the application should not be taken lightly, as registration of the application effectively allows an encroachment upon rights of the proprietor of the cited mark. However, there is a long history of the application of these concepts, and the legislation is designed to allow for coexistence of similar trade marks in particular circumstances.