28.2. Honest concurrent use - para 44(3)(a)

Trade Marks Act 1995

Trade Mark Regulations 1995

In order to overcome grounds for rejection under ss 44(1) or 44(2) of the Act, an applicant may, under para 44(3)(a), file evidence to establish honest concurrent use of their trade mark in Australia.

The doctrine of honest concurrent use evolved in response to changing market circumstances. Early 19^th century trade in goods that was once largely local had expanded so that similar trade marks innocently adopted by geographically separated traders had expanded so that their respective products were now in competition. The doctrine also acknowledged the practice of goodwill being divided amongst multiple successors to the original owner. The doctrine of honest concurrent use allowed trade marks to be protected when their use was not initially deceptive but when a risk of deception had subsequently arisen. (see GE Trade Mark [1973] RPC 297).

Criteria to be taken into account when applying s 34(1) of the 1955 Act (the equivalent of para 44(3)(a) of the 1995 Act) were set out by Lord Tomlin in Pirie’s Application (1933) 50 RPC 147. In John Fitton & Company Limited's application for a trade mark (1949) 66 RPC 110 the Assistant Comptroller refined those criteria to a list of five, namely:

1. the honesty or otherwise of the concurrent use

2. the degree of confusion likely between the trade marks in question

3. whether instances of confusion have in fact occurred

4. the extent of use in duration, area and volume

5. the relative inconvenience that would be caused to the respective parties if the applicant's trade mark should be registered or not registered.

The five criteria have been applied by Australian courts (McCormick & Company Inc v McCormick [2000] FCA 1335), but are not necessarily exhaustive (see Electrix Ltd.’s application [1957] RPC 369).

The relevant date for determining honest concurrent use under para 44(3)(a) is the filing date of the application (Zip Co Limited v Firstmac Limited [2026] HCA 16, [56] (‘Zip Co’). However, evidence of events (such as confusion in the marketplace) occurring after that date may assist in determining the likelihood of confusion at filing (see Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252).