What is a Concurrent Use Exception?

A trade mark application will be rejected when it is identical or substantially similar to another existing trade mark. Sometimes an applicant only finds out about a conflicting trademark when alerted by the trade marks office at IP Australia. Alternatively the application may be because a business owner has become aware of a similar product or business. A rejection can be remedied by the honest concurrent use exception. To be successful it is important to understand the rules are around concurrent use. The context of the trade mark and application are vital in this process.

Trade Marks in Australia

Applications in Australia must be rejected if they are substantially identical with, or deceptively similar to a trade mark registered or sought by another person which relates to similar or closely related goods or services. By default the trade mark with the earlier priority date will be protected.

The rationale behind this is that the public have a right to not be deceived about the origin of goods or services. This is balanced against the right of traders who honestly adopt their trade mark and through use develop valuable goodwill in their business. On this basis the honest concurrent use exception may allow registration of a conflicting trademark. Often the adoption of the trade mark was not originally deceptive but the risk of deception arose later. The events around the risk of deception should be free from dishonesty or wrongful conduct by the applicant.

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What Counts as Similar?

Similarity for goods and services is if they are the same, or of the same description as those of the compared trade mark. A trade mark that is deceptively similar will so closely resemble another trade mark that it is likely to deceive or cause confusion. If the risk of confusion or deception is too great or not outweighed by evidence of the honest use the exception will not be granted.

The Criteria for an Exception

When applying for an exception any factors can be taken into account. However the main areas considered are:

1. The degree of confusion likely between the trade marks in question.
2. Whether instances of confusion have in fact occurred.
3. The honesty or otherwise of the concurrent use.
4. The extent of use in duration, area and volume and.
5. Inconvenience caused to the parties if the applicant’s trade mark should be registered or not.

Honest Concurrent Use Evidence

Evidence must be shown that the trademark was chosen honestly. It also must have been used for a significant amount of time alongside the conflicting trademark. The use must have been in Australia, before the initial application and without any major changes to its form. It is important to consider:

1. When you chose your trademark.
2. Why you chose it.
3. When you first used it in trading.
4. If you knew about the conflicting trade mark.
5. If you know of any confusion in the market between the trade marks.
6. Has the use been continuous or uninterrupted?
7. The geographical areas of use in Australia.
8. The character of goods or services sold under the trade mark.
9. The way the goods or services were sold.
10. The value of the goods or services sold under the trade mark.
11. The amount of money spent on advertising the trade mark.
12. Any other information that shows how it has been used. 

It is important when relying on the honest concurrent use exception to have clean hands. This means approaching the process in an upstanding way. Examples may be that you have not done anything to deliberately infringe on another trade mark, or making an effort to be transparent with IP Australia and the market. 

The International Perspective

Due to the ease of international trade, particularly online, the boundaries between geographic markets have become blurred. To account for this trade mark law in Australia includes consideration of international impacts when granting trademarks within Australia. Consider whether your trade mark is substantially identical with, or deceptively similar to, international trade marks already established. Also consider any requests to extend registration of a trade mark to Australia. This is to prevent trademark squatting and unscrupulous attempts to profit from holding the trade mark rights of an existing brand.

What’s Next?

If you are successful under the honest concurrent use exception, the owner of the conflicting trademark will be notified. They then have the opportunity to oppose the application and you will need to respond to their submission. If unsuccessful in response, it is likely you will have to pay the costs of the process. 

Although you can apply and prepare evidence on your own, situations concerning conflicting trade marks can get complicated quickly. A little help can go a long way to reducing financial and mental costs. Find out whether a trade mark attorney or lawyer is better suited to assist you. You can have your trademark application completed by a specialised trademark attorney or review any concerns you may have with a lawyer.