Honest and Concurrent use of a Trade Mark

A trade mark is a vital part of any business and is the identity of a product or service. Accordingly, this area of law often times results in conflict between unprotected brands and existing trademarks.

Section44of the Trade Marks Act 1995 (the “Act”) prevents registration of a mark that is substantially identical or deceptively similar to a registered mark. Nevertheless, where there has been ‘honest and concurrent use’ of two (2) marks, the Registrar, at its discretion, may accept the registration.

Section 122(f) of the Trade Marks Act 1995 (the “Act”) states that one does not infringe a registered trademark where a Court would find that the otherwise infringing mark could be registered.

In the case of McCormick & Co Inc v McCormick, Mary McCormick applied to use ‘McCormick’s’ as a mark for her instant batter product. Her application was accepted by IP Australia, however, McCormick & Co opposed it based on it having a prior reputation and other registered trade marks.

In the Federal Court, Mary McCormick argued ‘honest and concurrent use’, whereas, McCormick & Co argued the same had not occurred. In assessing this claim, the Court considered the following factors:

  1. the honesty of the concurrent use;
  2. the extent of the use in time, geographic area and volume of sales;
  3. the degree of confusion likely to ensue;
  4. whether any instances of confusion have in fact occurred; and
  5. the relative inconvenience between parties involved in allowing or refusing the application, and whether there should be any conditions or limitations imposed.

In this case, the Court held in favour of McCormick & Coon the grounds that its prior reputation was sufficient to override any honest and concurrent use by Mary McCormick.

The McCormick case is a specific example of the application of the ‘honest and concurrent’ trademark rule, however, it should be noted that each trademark is assessed differently and it is important that if you feel that your trademark is being infringed upon, or may infringe upon another trademark, you should seek legal advice before proceeding.

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This article is not legal advice and should not be relied upon as legal advice. All articles found on this website are intended to provide informative information, nevertheless, in many instances legislation and case law has been simplified and/or paraphrased. If you would like personal legal advice based on your current circumstances, you should contact MurdockCheng Legal Practice for a free consultation.