28.4. Other circumstances - paragraph 44(3)(b)

Paragraph 44(3)(b) allows the acceptance of a trade mark application where the application would otherwise be subject to rejection under subsection 44(1) or 44(2). Acceptance on the basis of ‘other circumstances’ depends on a consideration of the commercial realities which, in the Registrar’s opinion, justify acceptance of an application notwithstanding a real risk of deception or confusion. Bali Trade Mark (No. 2) [1978] FSR 193 (‘Bali No. 2’), concerned, amongst other things, consideration of s 12(2) of the, now repealed, Trade Marks Act 1938 (UK). Section 12(2) dealt with ‘honest concurrent use, or of other special circumstances’. In Bali No. 2 at 221 ‘other special circumstances’ were considered by Fox J to be ‘special circumstances which justify taking the case out of the ordinary rules so that justice may be done to the applicant’.

Honesty of use is still essential.  While it is no longer a requirement that the circumstances be ‘special’, s44(3)(b) should be applied only if the Registrar is satisfied that “it is proper to do so”. Some examples of relevant circumstances include:

• A court order prevents the proprietor of the cited trade mark from interfering with any use of the application trade mark.

• The proprietor of the citation provides a valid letter of consent.  Please note that a letter of consent on its own is now generally considered sufficient to overcome a citation even where “triple identity” is present.

• Part 27 Overcoming Grounds for Rejection under Section 44 - 3.2. Letters of consent. Part 27.3.2  also covers general letters of consent, agreements between the parties, and information regarding commercial relationships between parties.

• An applicant already has a registered trade mark, that is substantially the same trade mark, for similar goods and/or services. Such a registration may have a priority date which is earlier or later than the conflicting trade mark’s priority date.  In such cases, however, other factors will need to be considered i.e. how long the trade mark has been on the Register and the Registrar should confirm that the trade mark has been used continuously on those similar goods/services (The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2016] ATMO 111). A written declaration by the applicant will be sufficient for the Registrar to confirm continuous use of the trade mark. The provision of evidence or a statutory declaration will usually not be required.