Evidence of simultaneous honest use is a way to overcome a conflict objection raised by IP Australia when your trademark application is initially refused on the grounds that your trademark is identical or similar to a trademark already registered in the Register of Identical or Similar Goods and Services. If you have filed a trademark application with IP Australia, you may receive a list of issues raised against your application. For example, the examiner may raise an Article 44 objection to your mark. In this case, however, the reviewer will likely make suggestions on how you can overcome these issues. In addition, depending on the circumstances, you can overcome this objection by providing evidence of honest simultaneous use. This article explains when it is appropriate to submit evidence of honest concurrent use, what type of evidence you should include, and how you should provide it. If you have received a negative examination report from IP Australia regarding your trademark application, you may consider evidence of honest simultaneous use. However, deciding if this option is right for your situation is a great first step. You should also consider the evidence required to demonstrate honest concurrent use, as outlined above. There are five key factors that a decision-maker will consider in determining whether the use of the trademark was honest and at the same time. Namely: Betty, for example, owns a pastry shop and has been operating under the CAKES GALORE brand for several years. Betty mainly sells pre-made and freshly baked cakes under CAKES GALORE. Betty`s business grew and became more successful.
As a result, it wishes to obtain trademark registration for CAKES GALORE in order to protect its trademark and intellectual property. Betty applied for registration, but was refused because there was another mark in the CAKEZ GALORE register. Research shows that this other retailer has also been using this brand for several years and sells cake batter, mixes and various types of flour under this brand. In order to overcome this objection, Betty may consider producing evidence of simultaneous honest use of her trademark CAKES GALORE. Under the heading “What to do now”, you will notice that the examiner offers one or more options to try to overcome the objection. For example, in the case of an objection based on article 44, it is customary for the examiner to offer evidence of honest concurrent use or prior use. You can create and submit evidence of honest simultaneous use yourself. However, it may be more appropriate to seek legal help if you are unsure of the process and types of evidence you want to include, or if you want to discuss the chances of success in filing this type of evidence. In general, this exception may occur when two separate entities have coexisted for a period of time and have honestly used the same or a similar mark for similar or related goods or services during that period, without knowledge of the existence of the other.
In order to prove your prior use of the mark, you can prove that you used your trademark at a time prior to the filing date of the conflicting trademark. To prove honest simultaneous use, you can prove that you honestly created your brand without knowing the conflicting trademark. In addition, you can prove that your trademark was used simultaneously alongside the conflicting mark without causing confusion in the public. If you have chosen your trademark dishonestly after becoming aware of the conflicting mark and the likelihood of confusion, you may not be able to rely on simultaneous honest use as a means of overcoming the objection raised. Evidence of concurrent fair use would be relevant if you honestly accepted your trademark. In addition, you may do so if you have used the mark at the same time as a conflicting trademark for an extended period of time without causing confusion to consumers. However, you must prove your use of the trademark in Australia before applying for trademark protection. In the context of defending against trademark infringement, acting in good faith means acting honestly. For example, in Angoves Pty Ltd v. Johnson [1982] FCA 119, the respondent had used the words “St Agnes Liquor Store” in his company name because the company was located in a suburb of Adelaide called St Agnes.