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

History and background to the concepts

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

The background to, and the philosophy of, honest concurrent use are neatly summarised by Lord Diplock in GE Trade Mark [1973] RPC 297 at 326:  

.. the interest of the public in not being deceived about the origin of goods had and has to be accommodated with the vested right of property of traders in trade marks which they have honestly adopted and which by public use have attracted a valuable goodwill. In the early nineteenth century trade was still largely local; marks which were identical or which closely resembled one another might have been innocently adopted by traders in different localities. In these their respective products were not sold in competition with one another and accordingly no question of deception of the public could then arise. With the rapid improvement in communications, however, in the first half of the nineteenth century markets expanded; products of two traders who used similar marks upon their goods could thus come to be on sale to the same potential purchasers with the consequent risk of their being misled as to the origin of the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the business the right to use a trade mark might be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop. To meet this kind of situation the doctrine of honest concurrent user was evolved. Under this doctrine a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of the mark. If, however, his own wrongful conduct had played a part in making the use of the mark deceptive, the Court of Chancery would not grant him an injunction against infringement. This was but a particular application of the general equitable doctrine that he who seeks equity must come with clean hands.

Criteria to be taken into account when applying subsection 34(1) of the 1955 Act (the equivalent of paragraph 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 degree of confusion likely between the trade marks in question;

2. whether instances of confusion have in fact occurred;

3. the honesty or otherwise of the concurrent use;

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

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

However, when speaking of these five points in Electrix Ltd.’s application [1957] RPC 369 Wynn-Parry J said, at 379:  

I do not read [Lord Tomlin] as intending to make an exhaustive statement of the factors which a judge should take into consideration when deciding how to exercise his discretion. The discretion is unfettered, and it appears to me that any relevant circumstance may, and indeed ought, to be considered.

The relevant date for determining honest concurrent use under paragraph 44(3)(a) is the priority date of the application (see Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [244]). However, evidence of events (such as confusion in the marketplace) occurring after that date may assist in determining the likelihood of confusion at filing.