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 ss 44(1) or 44(2). Acceptance based on ‘other circumstances’ depends on a consideration of the commercial realities which, in the Registrar’s opinion, make the acceptance of an application proper 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Trade Mark (No. 2) [1978] FSR 193 (‘Bali No. 2’), concerned, amongst other things, consideration of s 12(2) of the, now repealed, Trade Marks Act 1938 (UK).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’.

In Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, Middleton and Burley JJ at [226] referred to the term ‘other circumstances’ as being ‘enigmatic’, which highlights the unconstrained nature of the provision.

Honesty of use will still generally be essential, as s 44(3)(b) should be applied only if the Registrar is satisfied that ‘it is proper to do so’. It is unlikely that any use by the applicant that is not in good faith could form a compelling basis for registration.

The most common situation in which the Registrar will apply ‘other circumstances’ is where the owner of the cited mark provides a letter of consent or a co-existence agreement. These situations are dealt with in Part 27.3.

28.4.1  The relevant date

The ‘other circumstances’ which an examiner may consider in assessing whether it is proper for an application to be accepted may include those that came into existence after the priority date. This is because the relevant date for determining whether s 44(3)(b) applies is the time at which the discretion is exercised (See Trident at [83]).

In Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 at [176], the Full Court suggested that where s 44(1) or (2) was made out, but where an earlier decision had been made that the ‘blocking’ citation should be removed for non-use (but that that mark had not yet been removed from the Register), the later application should be accepted under s 44(3)(b).

28.4.2  When is it proper to exercise the discretion?

When an examiner is contemplating whether an application should be accepted because of ‘other circumstances’ they should holistically consider the evidence and the totality of circumstances, both for and against, to determine whether it is proper to accept the application in the face of a real and tangible danger of confusion. Some circumstances may be more compelling than others, but no circumstance should be considered in isolation. If, having regard to the evidence and the circumstances, an examiner is satisfied it is proper for the application to be accepted, then it is appropriate to exercise the discretion under s 44(3)(b).

28.4.3  Relevant circumstances?

Any circumstance that informs the Registrar of whether it may be proper to accept an application is relevant.

The criteria discussed above for honest concurrent use may also be relevant considerations when considering s 44(3)(b).

Some case specific examples of relevant circumstances that favoured registration of the trade mark include:

• The applicant had an intention to use two trade marks containing the word BANK but was prevented by law from doing so. Nevertheless, the longstanding use of other marks containing the same essential features was deemed to be a relevant ‘other circumstance’ (Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2019] FCA 1553, [474])
• The manner in which the goods or services are offered reduces the likelihood of confusion occurring. (The Totally and Permanent Disabled Soldier's Association v the Australian Federation of Totally & Permanently Incapacitated Ex-Service Men & Women Limited [2001] ATMO 63)
• The applicant and opponent both traded in clothing. The delegate held that the applicant’s trade in the niche field of upmarket women’s clothing meant that if the opponent (who owned a registration covering all clothing but traded in menswear) were to move into that field, it would be open to an action for passing off or misleading or deceptive conduct (Richard James Pty Ltd v Grant Olver Investments Pty Ltd [2005] ATMO 18).

The applicant failing to undertake appropriate steps to determine whether their trade mark was registrable was deemed to be a factor not favouring registration of the trade mark under s 44(3)(b). In Western Australian Land Authority [2014] ATMO 10, the delegate said at [30]:

It seems to me to be unlikely that the drafters of the Act intended the Registrar to permit the registration of deceptively similar trade marks, thereby eroding the rights of the owner of a registered trade mark, on the basis of hardship arising out of a failure by applicants to ensure as far as possible that they are likely to be able to register a particular trade mark before investing significant resources in it. It is possible at the very early stages of trade mark development that potential trade marks can be applied for and, if necessary, their examination expedited. This is a fairly straightforward procedure which can avoid significant hardship for an applicant. A failure to carry out such procedures or a decision to proceed with the investment of significant funds in the face of an adverse examination report does not warrant the exercise of the Registrar’s discretion on the basis of hardship. In my view, the potential hardship sufferable by the Applicant in this instance does not warrant acceptance on the basis of other circumstances pursuant to s 44(3)(b).

(see also O'Brien Boiler Services Pty Ltd v O'Brien Glass Industries [2023] ATMO 6).

28.4.4  Prior registrations

Sometimes an applicant already has a registered trade mark for the same trade mark, or for a trade mark with the same essential feature, that is causing conflict between their present application and the earlier cited trade mark.

The existence of an earlier trade mark registration is a relevant consideration to be taken into account under s 44(3)(b). However, the weight to be given to the earlier registration will differ according to the circumstances of each case.

In some cases, the existence of an earlier registration covering the same or very similar goods and services may be sufficient in itself to allow acceptance of a later trade mark. However, the examiner must carefully consider the circumstances of each case. The examiner must also take into account that while the owner of the cited trade mark may have in the past been willing to provide a letter of consent, circumstances may have changed.

An earlier registration relied on by an applicant may have a priority date which is earlier or later than the conflicting trade mark’s priority date. Generally, an applicant seeking to rely on ‘other circumstances’ will have a more compelling case where they have the earliest rights compared to the owner of the cited mark. 

Other factors that should be considered:

• the degree of similarity between the trade marks and/or goods/services
• whether the applicant’s earlier registration is subject to non-use proceedings by the owner of the earlier trade mark. In this situation, it may be inappropriate to apply ‘other circumstances’ as the applicant’s earlier registration may eventually be removed from the register. Applying ‘other circumstances’ may subvert the purpose of the non-use provisions of the Act
• whether the cited trade mark was registered on the basis of ‘prior use’ under s 44(4). In this situation, the owner of the cited trade mark has a claim to the earliest rights and it may be appropriate for the applicant to seek a new letter of consent
• whether the earlier registered trade mark owned by the applicant has recently been assigned to them. The fact that the owner of a cited trade mark has previously provided consent to another person doesn’t necessarily mean they would provide consent to the present applicant.

The following is an example of a situation where an applicant’s case for ‘other circumstances’ based on an earlier registration would be compelling. The applicant is the owner of a registered word trade mark ‘NORTH POLE’ for fresh bananas. The applicant seeks to register a logo version of that trade mark, comprising a composite of ‘NORTH POLE’ and an image of Santa Claus, for fresh bananas. The cited trade mark is NORTH POLE (word mark) for dried fruit snacks. That cited trade mark was itself registered on the basis of a letter of consent provided by the applicant. In this situation, given (i) the differences in goods, (ii) the ownership of earliest rights by the applicant, and (iii) the new application providing no additional rights in the words NORTH POLE over the applicant’s earlier registration for the same trade mark, it would be appropriate to accept the application for NORTH POLE & Santa Claus image based solely on the applicant’s earlier registration being a compelling ‘other circumstance’.

In some cases, it may be appropriate to request a declaration that the trade mark subject of an earlier registration has been in continuous use. For instance, if an applicant relies on an earlier trade mark that was registered some time ago (e.g. more than 10 years), the examiner may be justified in requesting a declaration that the trade mark has remained in continuous use.

Note: If you believe it is appropriate to accept a trade mark under s 44(3)(b), based on earlier existing rights owned by the applicant, a citation should still be raised and the applicant should be offered the opportunity to apply s 44(3)(b) provisions based on the earlier registration, in addition to any other relevant options available to the applicant. This is because the applicant may not wish to bring the acceptance of their trade mark to the attention of the cited mark’s owner via a third party acceptance letter, and/or the applicant may wish to pursue acceptance via other means.