28.6. Prior use - subsection 44(4)

Subsection 44(4) makes provision for the prior use of a trade mark in Australia, used continuously during a period beginning on a date before the priority date for the registration of a cited trade mark and ending on the priority date for the registration of the applicant's trade mark. That is, use of the applicant’s trade mark must have commenced in Australia before the priority date of the cited registration or application, and have been continuous at least up until the priority date of the applicant’s application. Under these circumstances, subsection 44(4) provides that the Registrar may not reject the application because of the existence of the other trade mark.

The subsection itself lists the tests which have to be met by any applicant claiming prior use status. The requirements for an application to come within the ambit of subsection 44(4) are:

1. the trade mark has been used by the applicant, or the applicant and the applicant’s predecessor in title, in Australia; and

2. the use has been continuous in respect of similar and/or closely related goods/services; and

3. the use commenced before the priority date for the registration of the conflicting trade mark and continued at least until the priority date for the registration of the applicant's trade mark.  

The applicant therefore has to establish:

• the date when use of the trade mark on the nominated goods or services by the applicant, or the applicant’s predecessor in title, commenced;

• that this date is earlier than the priority date of the cited trade mark; and

• that use of the trade mark by the applicant, or by the applicant and the applicant’s predecessor in title, has been continuous at least until the priority date of the application filed by the applicant.

The priority date for registration of the cited trade mark is readily accessible from the Register; the remaining matters must be established by the applicant.

• Part 26 Conflict with other Signs - Section 44 - 7. Trade marks with the same priority date