28.6. Prior use - s 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, s 44(4) provides that the Registrar may not reject the application because of the existence of the other trade mark.

The elements that must be satisfied by any applicant claiming prior use are:

1. the trade mark has been used by the applicant, or the applicant’s predecessor in title, or by an authorised user, in Australia

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

3. the use has been continuous in respect of the goods/services that are similar and/or closely related to the goods/services in the earlier similar mark/s.

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