Can Two Similar Trade Marks Co-Exist?
Yes, it is possible for similar trade marks to co-exist – both as registered or unregistered trade marks. With over 2.1 million trademarks on the Australian trade marks register, it would be fair to assume that there are some similar trade marks coexisting on that register and this is certainly true. Trade mark law has developed over centuries to accommodate circumstances where two traders can independently and honestly adopt similar trademarks and coexist in the marketplace without issue.
Even if their trade marks, their similar trade marks are being used in relation to similar goods or services. This can seem puzzling to trade mark applicants, particularly if you have received an adverse examination report that contains objections relating to prior similar marks. It seems counter-intuitive that the owners of both the marks can coexist.
However, in some circumstances they absolutely can. So the most typical situations where similar marks coexist legally are twofold. So the first one is when somebody has been using an unregistered trade mark continuously, starting from a time which actually predates either the filing date of a prior registered mark or the first use of a prior registered mark, whichever is the earlier. In that scenario they may be able to rely on those circumstances to prove that they’ve actually been a prior continuous user of their own trade mark.
In that case, the government body, IP Australia, may accept their application, even though it comes later in time and they might accept it with an endorsement on the basis of the evidence that’s filed showing prior continuous use of the trade mark. The later filed mark then becomes registered. This registration does not undo or cancel the one that was filed first, thus resulting in two similar marks coexisting on the trade marks register.
Another scenario where you might have two trade marks legally coexisting is when someone adopts the trade mark after the registration of the prior mark by a third party, but does so honestly and without knowing about that prior trade mark. That person may then proceed to use their unregistered trade mark, still not knowing of the prior mark for a period of time, perhaps years. And during that time they don’t encounter any instances of consumer confusion or conflict. In that case, again, the government body might accept a later trade mark application with a similar mark on the basis of evidence as honest and current use. Again, there will be an endorsement to indicate that evidence has been provided.
It’s important for parties to be aware about this possibility that similar marks can coexist peacefully and legally, because this can impact their marks relative to other parties who have similar marks, particularly in the context of disputes. And also in the context of adverse examinations from IP Australia. And so it’s important for anyone who has received a letter of demand, for example, from the prior trade mark owner or if the shoe’s on the other foot and they’re thinking about sending a letter of demand because they’ve become aware of another trade mark user to be aware that sometimes circumstances exist that allow the marks to coexist. So it’s important to seek advice from a trade marks attorney and find out what the true legal position is before you take further steps in responding to or issuing a letter of demand.
In a nutshell, coexisting trade marks typically occur when:
Scenario A, an examiners report. You have filed a trade mark application and the examiner has cited prior registered marks and you say to yourself “But, I’ve used my trade marks for however many years.” We then look at whether by virtue of your use you may be able to establish that you are either a prior continuous user or an honest concurrent user so as to be able to register your trade mark/s despite earlier filed similar marks.
Scenario B, letters of demand. When someone has sent you a demand letter because they have a registered mark and you don’t. But if you’ve used yours for a period of time, it might not be an infringement. You may have a defence as a prior user or an honest concurrent user.
Scenario C, you own the trade mark and become aware of a third party using a similar brand. If a registered owner becomes aware of a third party that’s using a similar mark that is not registered it doesn’t necessarily mean that it’s infringing. The third party may be in a position to argue there is no infringement if they are a prior continuous user or an honest concurrent user.
