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:

1. 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.

2. 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.

3. 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.