If you’re looking to expand into Australia or New Zealand, or acting for someone who wants to, don’t let your/their brand ambitions stumble at the first hurdle.
Although both markets are small, IP Australia and IPONZ have robust trade mark examination practices, and sometimes a citation is raised that it is simply not possible to overcome via arguments. While it is not necessary to show use to achieve a trade mark registration, nor is it possible to include a date of first use when filing a trade mark application, the doctrines of ‘honest concurrent use’, and particularly in Australia – ‘prior use’ – can be a way of squeezing your client’s trade mark onto the register alongside other current registrations.
However, recent cases in both jurisdictions show that “honest concurrent use” is no longer just about subjectively good intentions, it’s about due diligence, evidence, and strategy.
Australia: The bar has been raised
To be able to defend an infringement action or to obtain registration on the grounds of honest concurrent use, Australian courts now expect to see that objective, documented due diligence has been carried out before adopting or using a trade mark.
It’s not enough to simply claim you didn’t know about a prior mark.
You must prove you took steps that an honest and reasonable trader would have taken, like instructing comprehensive trade mark availability searches and seeking legal advice about whether a mark is free to use or register. Business name searches or desktop internet investigations are not considered sufficient. Failure to do the correct due diligence can potentially mean that a mark has not been adopted honestly, leading to the inability to register, safely use or enforce.
New Zealand: Following suit?
While New Zealand’s current approach is still more subjective than that in Australia, the trend is clear: applicants must show genuine honesty, supported by facts and market behaviour. The courts look at intent, the extent of use, and whether the applicant took steps to avoid confusion.
Key takeaways for overseas businesses:
- Don’t risk your brand: In both Australia and New Zealand, courts expect you to have conducted thorough trade mark searches before filing or using a mark.
- Evidence matters: You may need to provide proof of searches and a clear timeline. Such evidence must be accurate, as it will be in declaration form and will form part of the trade mark record. Sometimes, it may also result in waiving privilege in certain legal advice, which has to be treated especially carefully.
- Search quality counts: Not all searches are equal. Courts have rejected “tick-box” searches that miss obvious conflicts.
- Legal advice is crucial: An honest trader is expected to seek legal advice about prior rights and registration hurdles found during searching.
How AJ Park can help
AJ Park’s expert team understands the evolving standards in Australia and New Zealand. We conduct robust, defensible trade mark searches and provide clear, actionable advice, helping you avoid costly disputes and ensuring your filings stand up to scrutiny.
Don’t let your brand journey be derailed by avoidable hurdles. Contact AJ Park before you file.
