Intellectual Property Law Update - What on earth is honest concurrent use?

Intellectual Property
Benjamin Gardiner Headshot

One of the grounds of opposition to registration of a trade mark is provided by s 44 of the Trade Marks Act 1995.  It’s probably the most obvious one: you can’t register a mark if someone else has already registered it in respect of the same or similar goods and services.  There’s a bit of nuance to it but that’s pretty much it.

There are two exceptions however.  One is provided for applicants who have used their mark since before the other trader commenced use of the cited mark – that’s the s 44(4) exception which is usually called continuous prior use.  The second exception is provided for applicants who have used their mark concurrently with the owner of the cited mark – this is the “honest concurrent use” exception.

Section 44(3) of the TMA provides the detail:

(3)  If the Registrar in either case is satisfied:

                     (a)  that there has been honest concurrent use of the 2 trade marks; or

                     (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Honest concurrent use has not had much of a run lately.  It was pretty much killed off by Justice Kenny in McCormick & Co Inc v McCormick (2000) 51 IPR 102when she said “s 44(3) of the Act does not provide an exception to s 60“.  From then on, as long as an opponent had sufficient reputation and confusion was likely, honest concurrent use was no use to an applicant.

In the recent case of Apax Partners Midmarket v Apax Partners LLP [2015] ATMO 30, the opponent relied only on s 44 (and not on s 60).  Honest concurrent use was in issue.  Some “uncontroversial propositions” were set out by the hearing officer.  These included:

  1. The discretion conferred on the Registrar is a broad one;
  2. Honesty of the applicant (in a commercial sense) remains an important consideration;
  3. Whether the applicant knew of the opponent and its use of its trade mark is not determinative – the question is whether the applicant might have had a reasonable good faith expectation of pursuing registration based on its concurrent use or other circumstances;
  4. Even a high likelihood of confusion is not an automatic disqualification;
  5. The comparison of uses is relative in the sense that the weight to be attributed to the applicant’s use will vary depending on the extent of the opponent’s use.

The applicant was successful. The hearing officer accepted that the requirements of s 44(3) were made out despite the facts that the marks used by the applicant and opponent were identical and they operated in the “same sphere”.  It appears that the opponent was unable to demonstrate significant reputation vesting in its mark and it is assumed that this is the reason the application was not opposed under s 60.

While s 44(3) is often trumped by s 60, there are occasions where s 60 will not apply (no reputation, no likelihood of confusion) and so it must not be forgotten.

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Benjamin Gardiner Headshot

Ben Gardiner KC practises primarily in intellectual property litigation

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