- Home
- Part 1 Introduction, Quality
- 1. Introduction
- 2. Quality Management at IP Australia
- 3. Monitoring and Measuring Quality at IP Australia
- 4. Examination Quality Standards
- Part 2 General Filing Requirements
- Relevant Legislation
- 1. How a document is filed
- 2. Filing of Documents - requirements as to form
- 3. Non-compliance with filing requirements
- 4. Filing Process (excluding filing of applications for registration)
- Part 3 Filing Requirements for a Trade Mark Application
- Relevant Legislation
- 1. Who may apply?
- 2. Form of the application
- 3. Information required in the application
- 4. When is an application taken to have been filed?
- 5. The reason for having minimum filing requirements
- 6. The minimum filing requirements
- 7. Consequences of non compliance with minimum filing requirements
- 8. Other filing requirements
- 9. Fees
- 10. Process procedures for non payment or underpayment of the appropriate fee
- 11. Process procedures for the filing of a trade mark application
- Part 4 Fees
- Relevant Legislation
- 1. Fees - general
- 2. Circumstances in which fees are refunded or waived
- 3. Procedures for dealing with "fee" correspondence
- 4. Underpayments
- 5. Refunds and or waivers
- 6. No fee paid
- 7. Electronic transfers
- 8. Disputed credit card payments/Dishonoured cheques
- Part 5 Data Capture and Indexing
- Part 6 Expedited Examination
- Part 7 Withdrawal of Applications, Notices and Requests
- Relevant Legislation
- 1. Withdrawal of an application, notice or request
- 2. Who can withdraw an application, notice or request?
- 3. Procedure for withdrawal of an application, notice or request
- 4. Procedure for withdrawal of an application to register a trade mark
- Part 8 Amalgamation (Linking) of Trade Marks
- Relevant Legislation
- 1. Amalgamation of applications for Registration (Transitional)
- 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
- Part 9 Amendments and Changes to Name and Address
- Relevant Legislation
- 1. Introduction
- 2. Amendment of an application for a registration of a trade mark - general information
- 3. Amendment before particulars of an application are published (Section 64)
- 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
- 5. Amendments to other documents
- 6. Amendments after registration
- 7. Changes of name, address and address for service
- 8. Process for amendments under subsection 63(1)
- Part 10 Details of Formality Requirements
- Relevant Legislation
- Introduction
- 1. Formality requirements - Name
- 2. Formality requirements - Identity
- 3. Representation of the Trade Mark - General
- 4. Translation/transliteration of Non-English words and non-Roman characters
- 5. Specification of goods and/or services
- 6. Address for service
- 7. Signature
- 8. Complying with formality requirements
- Annex A1 - Abbreviations of types of companies recognised as bodies corporate
- Annex A2 - Identity of the applicant
- Part 11 Convention Applications
- Relevant Legislation
- 1. Applications in Australia (convention applications) where the applicant claims a right of priority
- 2. Making a claim for priority
- 3. Examination of applications claiming convention priority
- 4. Convention documents
- 5. Cases where multiple priority dates apply
- 6. Recording the claim
- 7. Effect on registration of a claim for priority based on an earlier application
- Part 12 Divisional Applications
- Relevant Legislation
- 1. Divisional applications - general
- 2. Why file a divisional application?
- 3. Conditions for a valid divisional application filed on or after 27 March 2007
- 4. In whose name may a divisional application be filed?
- 5. Convention claims and divisional applications
- 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
- 7. Can the divisional details be deleted from a valid divisional application?
- 8. Divisional applications and late citations - additional fifteen months
- 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
- Annex A1 Divisional Checklist
- Part 13 Application to Register a Series of Trade Marks
- Relevant Legislation
- 1. Series of Trade Marks - Act
- 2. Material Particulars
- 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
- 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
- 5. Restrict to Accord
- 6. Examples of Valid Series Trade Marks
- 7. Examples of Invalid Series Trade Marks
- 8. Divisional Applications from Series
- 9. Linking of Series Applications
- 10. Colour Endorsements
- Part 14 Classification of Goods and Services
- Relevant Legislation
- 1. The purpose of classification
- 2. The classification system
- 3. Requirement for a clear specification and for correct classification
- 4. Classification procedures in examination
- 5. Principles of classification and finding the correct class for specific items
- 6. Wording of the specification
- 7. Interpretation of specifications
- 8. International Convention Documents
- Annex A1 - History of the classification system
- Annex A2 - Principles of classification
- Annex A3 - Registered words which are not acceptable in specifications of goods and services
- Annex A4 - Searching the NICE classification
- Annex A5 - Using the Trade Marks Classification Search
- Annex A6 - Cross search classes - pre-June 2000
- Annex A7 - Cross search classes - June 2000 to December 2001
- Annex A8 - Cross search classes from 1 January 2002
- Annex A9 - Cross search classes from November 2005
- Annex A10 - Cross search classes from March 2007
- Annex A11 - Cross search classes from January 2012
- Annex A12 - Cross search classes from January 2015
- Part 15 General Provision for Extensions of Time
- Relevant Legislation
- 1. When the general provision applies
- 2. When the general provision does not apply
- 3. Circumstances in which the Registrar must extend time
- 4. Grounds on which the Registrar may grant an extension of time
- 5. Form of the application
- 6. Extensions of time of more than three months
- 7. Review of the Registrar's decision
- Part 16 Time Limits for Acceptance of an Application for Registration
- Relevant Legislation
- 1. What are the time limits for acceptance of an application to register a trade mark?
- 2. Response to an examination report received within four (or less) weeks of lapsing date
- Part 17 Deferment of Acceptance
- Relevant Legislation
- 1. Deferment of Acceptance - introduction
- 2. Circumstances under which deferments will be granted
- 3. Period of deferment
- 4. The deferment process where the applicant has requested deferment
- 5. The deferment process where the Registrar may grant deferment on his or her own initiative
- 6. Termination of deferment
- 7. Transitional practice
- Annex A1 - Deferment of acceptance date - Grounds and time limits
- Part 18 Finalisation of Application for Registration
- Relevant Legislation
- 1. Introduction
- 2. Accepting an application for registration
- 3. Rejection of an application for registration
- Part 19A Use of a Trade Mark
- Relevant Legislation
- 1. Use of a trade mark generally
- 2. Use 'as a trade mark'
- 3. Use 'in the course of trade'
- 4. Australian Use
- 5. Use 'in relation to goods or services'
- 6. Use by the trade mark owner, predecessor in title or an authorised user
- 7. Use of a trade mark with additions or alterations
- 8. Use of multiple trade marks
- Part 19B Rights Given by Registration of a Trade Mark
- Relevant Legislation
- 1. The trade mark as property
- 2. What rights are given by trade mark registration?
- 3. Rights of an authorised user of a registered trade mark
- 4. The right to take infringement action
- 5. Loss of exclusive rights
- Part 20 Definition of a Trade Mark and Presumption of Registrability
- Relevant Legislation
- 1. Definition of a trade mark
- 2. Background to definition of a trade mark
- 3. Definition of sign
- 4. Presumption of registrability
- 5. Grounds for rejection and the presumption of registrability
- Part 21 Non-traditional Signs
- Relevant Legislation
- 1. Non-traditional signs
- 2. Representing non-traditional signs
- 3. Shape (three-dimensional) trade marks
- 4. Colour and coloured trade marks
- 5. "Sensory" trade marks - sounds and scents
- 6. Sound (auditory) trade marks
- 7. Scent trade marks
- 8. Composite trade marks - combinations of shapes, colours, words etc
- 9. Moving images, holograms and gestures
- 10. Other kinds of non-traditional signs
- Part 22 Section 41 - Capable of Distinguishing
- Relevant Legislation
- 1. Registrability under section 41 of the Trade Marks Act 1995
- 2. Presumption of registrability
- 3. Inherent adaptation to distinguish
- 4. Trade marks considered sufficiently inherently capable of distinguishing
- 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
- 6. Trade marks having no inherent adaptation to distinguish
- 7. Examination
- Registrability of Various Kinds of Signs
- 8. Letters
- 9. Words
- 10. Phonetic equivalents, misspellings and combinations of known words
- 11. Words in Languages other than English
- 12. Slogans, phrases and multiple words
- 13. Common formats for trade marks
- 14. New terminology and "fashionable" words
- 15. Geographical names
- 16. Surnames
- 17. Name of a person
- 18. Summary of examination practice in relation to names
- 19. Corporate names
- 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
- 21. Titles of other books or media
- 22. Numerals
- 23. Combinations of letters and numerals
- 24. Trade marks for pharmaceutical or veterinary substances
- 25. Devices
- 26. Composite trade marks
- 27. Trade marks that include plant varietal name
- Annex A1 Section 41 prior to Raising the Bar
- Annex A2 Flowchart of "Capable of Distinguishing"
- Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
- Relevant Legislation
- 1. Introduction
- 2. Submissions in rebuttal, amendments and informal information
- 3. Evidence of use - general requirements
- 4. Examining evidence - general
- 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
- 6. Endorsements for applications overcoming section 41 grounds for rejection
- Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
- Annex A2 - Model layout for statutory declaration/affidavit
- Annex A3 - Model layout for supporting statutory declaration
- Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
- Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
- Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
- Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
- Part 24 Disclaimers
- Relevant Legislation
- 1. What is a disclaimer?
- 2. Request for a voluntary disclaimer
- 3. Effect of a disclaimer on registration
- 4. Effect of a disclaimer on examination
- 5. Amendment of disclaimers
- 6. Revocation of disclaimers
- Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
- Relevant Legislation
- 1. Introduction to section 44 and regulation 4.15A
- 2. Presumption of registrability and the application of section 44
- 3. Cross Class Search List
- 4. Similarity of goods and services
- 5. Similarity of trade marks
- 6. Factors to consider when comparing trade marks
- 7. Trade marks with the same priority/filing date
- 8. Assignment of applications and registrations
- 9. Grounds for rejection when the citation is in its renewal period
- Annex A1 - Citing multiple names
- Part 27 Overcoming Grounds for Rejection under Section 44
- Relevant Legislation
- 1. Introduction
- 2. Amending the goods and/or services of the applicant's specification
- 3. Negotiation with owner/s of conflicting trade mark/s
- 4. Filing evidence of honest concurrent use, prior use or other circumstances
- 5. Removal of the conflicting trade mark
- 6. Dividing the application
- Annex A1 - An example of a letter of consent
- Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
- Relevant Legislation
- 1. Introduction
- 2. Honest concurrent use - paragraph 44(3)(a)
- 3. Examining evidence of honest concurrent use - the five criteria
- 4. Other circumstances - paragraph 44(3)(b)
- 5. Conditions and limitations to applications proceeding under subsection 44(3)
- 6. Prior use - subsection 44(4)
- 7. Examining evidence of prior use
- 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
- Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
- Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
- Relevant Legislation
- 1. Trade marks likely to deceive or cause confusion
- 2. Connotation
- 3. Deception and confusion as a result of a connotation within a trade mark
- 4. Descriptions of goods/services
- 5. International Non-Proprietary Names and INN Stems
- 6. Names of Persons
- 7. Phonewords and Phone Numbers
- 8. Internet Domain Names
- 9. Geographical References
- 10. Claims to Indigenous Origin
- Annex A1 - Table of INN stems
- Part 30 Signs that are Scandalous and Use Contrary to Law
- Relevant Legislation
- 1. Introduction
- 2. Scandalous signs
- 3. Use contrary to law
- Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
- Annex A2 - Official notice re copyright in the Aboriginal Flag
- Annex A3 - Defence force prohibited terms and emblems
- Annex A4 - Major Sporting Events protected words
- Part 31 Prescribed and Prohibited Signs
- Relevant Legislation
- 1. Prohibited signs - subsection 39(1)
- 2. Prescribed signs - subsection 39(2)
- 3. When does a ground for rejection exist under subsection 39(2)?
- 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
- 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
- Part 32A Examination of Trade Marks for Plants (in Class 31)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Plant Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 39: Prescribed Signs
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 43: Deception and Confusion
- 2.5 Section 44: Comparison of Trade Marks
- 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
- Annex 1 - Applicable Section of the PBR Act
- Annex 2 - Applicable Sections of the UPOV Convention
- Annex 3 - Applicable Sections of the ICNCP
- Annex 4 - An Example of a PBR Letter of Consent
- Annex 5 - Case Law Summaries
- Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
- Part 32B Examination of Trade Marks for Wines (in Class 33)
- Relevant Legislation
- 1. Introduction
- 2. Examination of Wine Trade Marks
- 2.1 Section 42: Contrary to Law
- 2.2 Section 43: Deception and Confusion
- 2.3 Section 41: Capacity to Distinguish
- 2.4 Section 44: Comparison of Trade Marks
- 3. Protected Terms in Specifications of Goods
- Part 33 Collective Trade Marks
- Relevant Legislation
- 1. What is a collective trademark?
- 2. Application of Act
- 3. Application for registration
- 4. Limitation on rights given by registered collective trade marks
- 5. Assignment or transmission of collective trade marks
- 6. Infringement of collective trade marks
- Part 34 Defensive Trade Marks
- Relevant Legislation
- 1. Australian trade marks law and defensive trade marks
- 2. Requirements for the filing of a defensive trade mark
- 3. Section of the Act NOT applying to defensive trade marks
- 4. Registrability of defensive trade marks
- 5. Grounds for rejection under Division 2 of Part 4 of the Act
- 6. Grounds for rejecting a defensive application under section 187
- 7. Evidence required for defensive applications
- 8. Rights given by defensive registration
- 9. Grounds for opposing a defensive registration
- 10. Cancellation of defensive trade marks
- Part 35 Certification Trade Marks
- Relevant Legislation
- 1. What is a certification trade mark?
- 2. Certification trade marks and geographical indications (GIs)
- 3. Sections of the Act NOT applying to certification trade marks
- 4. The registrability of certification trade marks
- 5. Rights given by, and rules governing the use of, certification trade marks
- 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
- 7. Opposition to the registration of a certification trade mark
- 8. Variation of rules
- 9. Assignment of registered certification trade marks
- 10. Assignment of unregistered certification trade marks
- 11. Transmission of certification trade marks
- 12. Rectification of the Register and variation of rules by order of the court
- Annex A1 - Certification Trade Marks flow chart
- Part 38 Revocation of Acceptance
- Relevant Legislation
- 1. What is revocation of acceptance?
- 2. Reasons for revocation
- 3. Revocation process
- Part 39 Registration of a Trade Mark
- Relevant Legislation
- 1. Overview of registration
- 2. Particulars of registration
- 3. Format of Certificate of registration
- 4. Timing
- 5. Date and term of registration
- 6. Registration fees
- 7. Registration process
- 8. Notification of Protection process for International Registrations Designating Australia
- Annex A1 - Certificate of Registration
- Part 40 Renewal of Registration
- Part 41 Cancellation of Registration
- Relevant Legislation
- 1. What is the effect of cancelling a registration?
- 2. Why is a registration cancelled?
- 3. Cancellation process
- Part 42 Rectification of the Register
- Relevant Legislation
- 1. What is rectification?
- 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
- 3. Rectification procedures
- Annex A1 - Flow chart of rectification procedure
- Part 43 Assignment and Transmission
- Relevant Legislation
- 1. What is assignment and transmission?
- 2. Timing for assignment
- 3. Application to record assignment etc
- 4. Process for assigning all goods and/or services (full assignment)
- 5. Process for assigning only some goods and/or services (partial assignment)
- 6. Process for assignment of certification trade marks
- 7. Transmission of certification trade marks
- Part 44 Claim of Interest or Rights in a Trade Mark
- Relevant Legislation
- 1. Background
- 2. Effect of recording the claim
- 3. When can the interest be recorded?
- 4. Recording the claim
- 5. Amending the record of a claim
- 6. Cancelling the record of a claim
- Part 45 Copies of Documents
- Relevant Legislation
- 1. Documents copied by the Office
- 2. Types of copies requested
- Annex A1 - Flow chart of production of copies/certified copies
- Part 46 Grounds for Opposition to Registration or Protection
- Relevant Legislation
- References used in this part
- 1. What is opposition to registration or protection?
- 2. The Registrar’s role in an opposition
- 3. When registration or protection can be opposed
- 4. Grounds for opposition to registration of national trade marks
- 5. Grounds for opposition to protection of international trade marks
- Part 47 Procedures for Opposing Registration or Protection
- Relevant Legislation
- 1. Filing a notice of opposition
- 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
- 3. Filing a notice of intention to defend
- 4. Opposition may proceed in the name of another person
- 5. Making Convention documents available to opponent
- Part 48 Removal of a Trade Mark from the Register for Non-use
- Relevant legislation
- References used in this part
- 1. What if a trade mark is not used?
- 2. Application for removal/cessation of protection for non-use
- 3. Opposition to a non-use application
- 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
- 5. Grounds on which a non-use application may be made
- 6. Burden on opponent to establish use of a trade mark
- 7. Authorised use by another person
- 8. Use by an assignee
- 9. Localised use of trade mark
- 10. Circumstances that were an obstacle to the use of a trade mark
- 11. Where there is no evidence in support of the opposition
- 12. Registrar's discretion in deciding an opposed non-use application
- 13. Registrar to comply with order of court
- 14. Right of appeal
- 15. Certificate - Use of a trade mark
- Part 49 Non-use Procedures
- Relevant legislation
- 1. Application for removal or cessation of protection of a trade mark for non-use
- 2. Opposition to non-use application
- 3. Amendment to notice of intention to oppose or statement of grounds and particulars
- 4. Notice of intention to defend
- 5. Opposition may proceed in the name of another person
- 6. Opposition proceedings
- Part 51 General Opposition Proceedings
- Relevant Legislation
- 1. Evidence
- 2. Extension of the period for filing evidence
- 3. Cooling-Off Period
- 4. Suspensions
- 5. Hearing of the opposition
- 6. Dismissal or discontinuance of proceedings
- 7. Award of costs
- 8. Rights of appeal
- 9. Period in which a trade mark can be registered/protected
- 10. Guidelines for Revocation of Acceptance of Opposed trade marks
- 11. Unilateral Communications with Hearing Officers
- Part 52 Hearings, Decisions, Reasons and Appeals
- Relevant Legislation
- References used in this Part
- 1. What is a decision?
- 2. What is a hearing?
- 3. Is a hearing always necessary?
- 4. Role and powers of the Registrar in hearings
- 5. Rights of appeal from decisions of the Registrar
- 6. Appeals from decisions of the Federal Court etc.
- 7. Implementation of decisions
- 8. Service of documents on the Registrar
- Part 54 Subpoenas, Summonses and Production of Documents
- Relevant Legislation
- 1. Subpoenas
- 2. Summonsing a witness
- 3. Production of documents
- Annex A1 - Consequences of mishandling a subpoena
- Annex A2 - Format of a summons to witness
- Annex A3 - Format of notice requiring production
- Part 55 Costs
- Relevant Legislation
- 1. Legislative Basis
- 2. Award of costs
- 3. Applications for an award of costs
- 4. Determination of the amount of costs
- 5. Full costs where certificate of use of a trade mark provided to removal applicant
- 6. Costs recovery
- 7. Security for costs
- Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
- Part 60 The Madrid Protocol
- Relevant Legislation
- Glossary
- 1. Introduction
- 2. International Applications
- 2.1 General Description
- 2.2 International Application Form
- 2.3 Data Entry
- 2.4 Certifying Process
- 2.5 Fees for International Applications
- 2.6 Renewal
- 3. The Basic Application or Basic Registration (Basic Trade Mark)
- 4. International Registrations that have Designated Australia
- 4.1 General Description
- 4.2 Record of International Registrations
- 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
- 4.4 Indexing
- 4.5 Expedite
- 4.6 Classification of Goods and Services
- 4.7 Examination of an IRDA
- 4.8 Reporting on an IRDA
- 4.9 Provisional Refusal
- 4.10 Amendments
- 4.11 Deferment of Acceptance
- 4.12 Extension of Time
- 4.13 Final Decision on Provisional Refusal Based on Examination
- 4.14 Acceptance
- 4.15 Revocation of Acceptance
- 4.16 Extension of Time to File Notice of Opposition to Protection
- 4.17 Opposition to Protection
- 4.18 Protection
- 4.19 Cessation or Limitation of Protection
- 4.20 Cessation of Protection because of Non-Use
- 4.21 Opposition to Cessation of Protection because of Non-Use
- 4.22 Renewal
- 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
- 4.24 Change in Ownership of an International Registration
- 4.25 Transformation
- 4.26 Replacement
- 4.27 Customs
- Part 61 Availability of Documents
- Relevant Legislation
- 1. Availability of Documents
- 2. Accessing Documents
- 3. Documents to be made Available for Public Inspection (API)
- 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
- 5. Confidential Information in Correspondence
- 6. Policy in relation to TM Headstart
- Part 62 Revocation of Registration
- Relevant Legislation
- 1. What is revocation of registration?
- 2. Prerequisites to revocation of registration
- 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
- 4. Circumstances under which registration may be revoked
- 5. Mandatory revocation
- 6. Right of appeal: revocation of registration
- 7. Extension of time
- 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
- 9. Registrar must notify Customs if protection of a PITM is revoked
- 10. Right of appeal: cessation of protection
28.3. Examining evidence of honest concurrent use - the five criteria
When examining evidence for honest concurrent use, examiners need to consider all five criteria listed at paragraph 2. This is the most efficient way of coming to a decision on these cases, few of which are likely to be clear cut. Applicants supply the information in different formats and in different orders within their submissions. The Office does not insist on any particular order for this evidence, but encourages applicants to supply information pertinent to all five criteria. On occasions, it might be necessary to request additional information if what the applicant provides does not give a sufficiently clear picture.
3.1 The degree of confusion likely between the trade marks in question
Paragraph 44(3)(a) provides an exception for the registration of trade marks which are likely to cause confusion and which would otherwise fail on the tests of subsections 44(1) or 44(2). That such marks can be registered under this provision has been acknowledged by the courts as far back as “Pirie’s Application” (see In the matter of an application by Alex. Pirie & Sons Ltd. to register a trade mark (1932) 49 RPC 195 (Court of Appeal) and (1933) 50 RPC 147 (House of Lords)). In the first of these cases, Lord Justice Hanworth says, at 213:
... I find that Section 21 [of the 1905 UK Act and equivalent of s34(1) of our 1955 Act, now equivalent of section 44 is a Section which does not carry with it a limitation as to there being a slight possibility of deception, for its words indicate that the Registrar may permit the registration of the same trade mark, or of nearly identical trade marks, for the same goods by more than one proprietor. It seems to indicate that the powers of the Court can be exercised even when there is likely to be confusion between the marks. (Emphases added)
and Lord Justice Lawrence at 215 says
... the mere fact that there may be confusion between the two marks in no way precludes the Court or Registrar, under proper circumstances, from permitting registration of the second mark.
3.1.1
Factors affecting the degree of confusion:
Public inconvenience. Consideration must be given to the effect on the public of being exposed to two very similar trade marks, and the likelihood of confusion as to ownership resulting from this exposure. The more similar the trade marks are, the greater is the likelihood of confusion, and the greater the public inconvenience. If the trade marks are identical, there must be a strong case of honest concurrent use before the provisions of paragraph 44(3)(a) can be applied.
Triple Identity. Triple identity refers to trade marks which are identical or substantially identical, and used for the same goods/services in the same geographical area. These are obviously trade marks where the public inconvenience arising from use of the trade marks is likely to be very high. Applications falling into this category will need to be supported by substantial and convincing evidence before acceptance is likely to be allowed.
The nature of the trade mark itself. Broadly, if the trade mark is commonplace, purchasers are not likely to expect exclusive proprietorship. See paragraph 3.3 and the comments of Assistant Registrar Farquhar in Jean Patou Parfumeur v Crisena Corp Pty Ltd 20 IPR 660 that it was not surprising more than one trader had selected the trade mark "Joy". Expectations, however, are different if the trade mark has a high degree of adaptation to distinguish. The word “Wuppertaler”, as applied to bread, could be cited as a trade mark which is out of the ordinary (Re Dandenong Ranges Bakery, AIPC 90-740).
A finding of a strong likelihood of confusion between the marks is not necessarily fatal to the applicant's case. But the information supplied for the remaining four criteria (paras 3.2 - 3.5) would need to be very persuasive to overcome this shortcoming.
3.2 Whether instances of confusion have in fact occurred
It is not usual for instances of confusion to be before the examiner. The applicant is in a position to say whether or not they are aware of any instances and this information may be included in the evidence declaration. In most cases, mention of this matter consists of a brief denial of knowledge of any instances contained within the applicant's declaration. Such information, when incorporated in a declaration, will be taken at face value.
In the unlikely event that confusion is shown to exist, it will have a direct bearing on the first consideration, and will undoubtedly add force to concern regarding the degree of confusion likely. The onus on the applicant to satisfactorily meet the remaining tests will be all the more heavy. However, the discovery of instances of actual confusion is not necessarily fatal to the application. (See Berlei Limited v Bali Brassiere Co Inc (1968) 118 CLR 128 (“Bali”)).
3.3 The honesty or otherwise of the concurrent use
Honesty of use is a prerequisite to the application of paragraph 44(3)(a) and the onus for establishing this honesty rests with the applicant. Without some reference to the reasons for adopting the trade mark in the face of the pre-existing trade mark, the application is unlikely to proceed under these provisions.
The importance of the honesty of the applicant in adopting the trade mark in question is made clear by Lord Justice Diplock in the “GE” case referred to earlier. The importance of honesty was dealt with by the Registrar's delegate in Foodland Associated Limited v John Weeks Pty Ltd. In the Matter of Trade Mark Application No. B370430, ((1988) AIPC 90-466) (“Bi-Lo”). At 38,122 the delegate commented on honesty as follows:
This is perhaps the most critical factor to be assessed in considerations of this kind, ‘for if the concurrent use is not honest it is nothing’: per Mr Myall in the Granada case (1979) RPC 303 at 313.
It is clearly law that an application under paragraph 44(3)(a) will fail if it is shown that use of the trade mark is dishonest. In the matter of an application by J.R. Parkington and Coy. Ltd. and In the matter of an opposition thereto by Frederick Robinson, Ltd. (1946) 63 RPC 171) Romer J. at 183 said:
In knowledge of all this Parkingtons secretly adopted their mark and secretly put it to commercial use. I should be sorry for it to be thought that such conduct is, in the view of this Court, commercially honest. I am abundantly clear that it is not, and that traders who obtain the use of a name by hoodwinking those who would have interfered had they known the truth, cannot some years later come to the Court and found a claim for relief on the footing of honest concurrent user.
However, so long as there is no reason to doubt the honesty, a statement within the declaration giving a satisfactory account of the adoption of the trade mark will usually satisfy this critical consideration. As Wynn-Parry J said in “Electrix Ltd”, referred to earlier, at 379:
The user is clearly established and no one has sought to challenge the honesty of the user; therefore in this case Sec.12(2) of the Act applies.
An example is a case where the trade mark has been in use for many years and those years substantially pre-date lodgement of the citation. In the “Bi-Lo” case, referred to earlier, where the applicant has offered no explanation of its choice of BI-LO as a trade mark the delegate nevertheless concluded as follows:
... notwithstanding its earlier use of the BUY-LOW program ... I do not believe that there is enough in this material to conclude that the applicant's adoption of the mark BI-LO was dishonest ... Although aware of the opponent's use in South Australia, the applicant had used a similar phrase BUY-LOW some time earlier in Western Australia, and the variation to BI-LO is an obvious one... I therefore find nothing sinister in the applicant's similar rendering of its mark.
And further, in the “Joy” case, above, at 664:
There is no explanation for the adoption of the subject mark given in the applicant's evidence; While the material provides no reason for the choice of the word JOY, it is not such an unusual selection as to immediately suggest plagiarism of the opponent's mark. It is an ordinary dictionary word in everyday use, which conveying as it does an agreeable suggestion of happiness and satisfaction, would seem to me to be one that traders in general would find attractive and desirable in promoting their goods or services through a trade mark. I note that there are a number of marks already on the Register which contain or consist of the word, and specifying a general range of goods, including laundry products and foodstuffs.
On balance, then, I am not prepared to find that there was any dishonesty in the adoption, or the continuing use, of the subject mark.
It should be noted that mere knowledge of the prior trade mark(s) does not (without more) preclude a finding that an applicant has acted honestly (McCormick & Company Inc v McCormick [2000] FCA 1335, [33]). However, in cases where the conflicting trade marks are identical, or nearly so, and also have a high level of adaptation to distinguish, the applicant should ideally furnish a statement indicating:
whether at the time of adopting the trade mark they were aware of the other trade mark: and, if so,
why in the face of that knowledge they decided to persist.
3.4 The extent of use in duration, area and volume
Evidence of use of the trade mark (see Part 19A: Use of a Trade Mark) must show that the mark has been used before the priority date of the applied for trade mark in respect of similar goods or services, for a satisfactory term, over a satisfactory area and to a satisfactory level. As indicated by “GE”, mentioned earlier, and “Granada" Trade Mark, 1979 RPC 303, the evidence ought to demonstrate real commercial value and goodwill in the trade mark.
The extent of use required is, naturally, directly proportional to the degree of confusion expected. In the case of “triple identity”, the duration, area and volume of use would need to be substantial (EJOT GmbH & Co. KG v Eastcoast Fasteners Pty Limited [2017] ATMO 45, [24). On the other hand, where the risk of confusion is not so high, the extent of use required to successfully support the case is commensurately lessened.
In assessing the evidence, the examiner must weigh the components of the use, particularly duration, volume sold, amount of promotion and the extent of the market. It may be apparent that a shortfall in one of these components is compensated by the strength of another. For example, limited sales or a limited market size could be compensated by long term use with the prospect of a geographic limitation depending on the particular merits of the case.
The evidence must be presented in declaratory form by the applicant or by a competent member of the applicant organisation. In the majority of cases, the information necessary to support the application can be presented in that declaration. It should give:
The history of the adoption of the trade mark and an explanation of why it was selected (see 3.3). Ideally, the history will include a statement indicating whether or not, at the time of adopting the current trade mark, the applicant had any knowledge of the cited trade mark.
An account of the use of the trade mark in relation to the goods or services in respect of which the trade mark has been used prior to application; examples of the trade mark in use (as per brochures or other advertising material); the volume of sales of those goods or services; and an account of the extent of use in the states in which those sales have taken place.
An account of the advertising that has been undertaken including the outlay on advertising and, if available, particulars and samples of the publications in which advertisements have appeared.
Supporting declarations from members of the trade are not usually necessary. However, there may be occasions when evidence from members of the trade will be the factor that turns the case in favour of acceptance. An example would be where the likelihood of confusion between the marks is very high, and where use is limited in time and turnover, but where the goods or services are specialised. In such a case the evidence of the supporting declarations could uphold the claim that within the bounds of the specialist area there has been satisfactory concurrent use.
Duration or length of use: Although “Fitton’s application” was allowed on use over 20 years, it should be kept in mind that in many of the decided cases long term use was not necessary. Of cases decided by the courts, “Pirie’s application” was allowed on 6 years use prior to lodgement; “Granada” on rather less than 3 years use prior to lodgement; and “Bali” would have been allowed on 8 years use prior to lodgement (but was refused on exercise of discretion in consequence of the applicant's behaviour). In other decisions of the Registrar's delegates, “Shelseal” (12 IPR 525) was allowed on 11 years use before application, “Olin Pace” was allowed on 6 years, “Joy” was allowed on 8, and “Watermaid” was allowed on 15. Of this list, “Shelseal” and “Watermaid” were “triple identity” cases. As per Lord Hanworth MR in “Pirie’s application” H.L. (supra) at 212:
It must always be a matter of consideration to be weighed as to whether or not the user has been of such a length of time as would justify it being called a user... It would be impossible to say that in all cases a particular span of time must be accomplished before it can be treated as justifying a user within section 21.
As a general guide however, if a trade mark has been used for 10 years or so before its priority date, and if turnover of goods under that trade mark has been extensive, then the provisions of paragraph 44(3)(a) can most likely be applied, even in the case of “triple identity”. In some cases it might be appropriate to impose limitations. Where the likelihood of confusion is not so great, evidence of considerably shorter periods of use and lower levels of turnover will suffice. It was found, however, in “Bi-Lo”, (supra), that 1-7 months could not be enough:
... the applicant's period of use had been very limited: about one month in the first instance and about seven months in the second ... I find it difficult to concede that any amount of use, no matter how great in monetary terms, in such a short period would be sufficient to meet the overall requirement that the use be substantial and of real commercial value.
3.5 The relative inconvenience that would be caused to the respective parties if the applicant's mark should be registered
This consideration entails a weighing up of the inconvenience to be borne by the applicant if the registration is denied, against any inconvenience likely to be conversely imposed on the proprietor of the cited trade mark.
As with the second consideration (see 3.2) the full facts are unlikely to be available to the examiner and in the main, the assessment will need to be on the basis of the inconvenience to the applicant. However, it is fair to say that a trade mark owner who has enjoyed the marketplace to itself over a period will undoubtedly suffer some inconvenience if another player enters the same market with the same or a very similar trade mark.
Inconvenience to the applicant will be directly related to the goodwill that exists. If this goodwill is valuable, the applicant will clearly have a strong interest in securing registration rights. If registration is not available and if continued use is liable to infringe, then the inconvenience to the applicant might include the prospect of abandoning the subject trade mark and the goodwill attached thereto.
The examiner must make a decision on balance.
3.6 Summary of information requirements for honest concurrent use
The following is a reminder list of information necessary for an examiner to make a decision under the provisions of paragraph 44(3)(a):
The evidence should demonstrate use in Australia before the date of priority for the applied-for trade mark. Use after the priority date will not support the applicant's case.
The use should be over a commercially reasonable period of time. It is unlikely that consumers will have been exposed to both trade marks in the marketplace if the period of use is very short. This usually means the applicant has to demonstrate several years of use before the priority date.
The applicant should provide information about the reasons for adoption of the mark in the face of the pre-existing trade mark. This points to the honesty of use, and failure to supply this information may prevent the mark proceeding.
The applicant should address the matter of instances of confusion. A statement within the declaration specifying lack of knowledge of any instances will be taken at face value at the examination stage.
The applicant should provide clear information on the goods/services on which the trade mark was used before the priority date. As the applicant is claiming concurrent use, it is not appropriate to allow the mark to proceed for a broad range of goods/services if the evidence only supports something narrower. However, it should be noted that concurrent use only needs to be established for the conflicting goods/services.
The applicant should provide a clear indication of the geographical extent of use. The examiner needs to decide whether it is appropriate to allow the mark to proceed for a broad geographical area, or to restrict it to a particular geographical area.
Evidence for honest concurrent use needs to be detailed and complete. The examiner is trying to conceptualise where the trade mark stands within its particular marketplace. The greater the detail supplied, the easier it will be for the decision to be made.
A useful summary of the type of evidence needed to support honest concurrent use is attached to this part as Annex A1.
Amended Reasons
Amended Reason | Date Amended |
---|---|
Update hyperlinks |
|
Minor typo corrected |