Honest concurrent use, other circumstances and prior continuous use

IP Australia has received a submission noting trade marks that have been accepted under sections 44(3) or (4) of the Trade Marks Act 1995 do not insulate the applicant’s mark from grounds of opposition other than section 44(1) and (2), and complicates the operation of the defences to infringement contained in section 122(1)(f) and (fa).

At a glance

Policy ID: 167

Status: On hold

Priority: Low

Trade marks

Issue Summary

IP Australia has received a submission noting trade marks that have been accepted under sections 44(3) or (4) of the Trade Marks Act 1995 do not insulate the applicant’s mark from grounds of opposition other than section 44(1) and (2) (see Fanatics, LLC v FanFirm Pty Ltd [2025] FCAFC 87), and complicates the operation of the defences to infringement contained in section 122(1)(f) and (fa) (see Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380).

The submission suggests the Act be amended so that evidence of honest concurrent use, other circumstances and/or prior use could be taken into account for grounds of opposition under sections 58 and 60.

IP Australia will consider whether the current policy settings are appropriate.

History

On hold, 28 September 2026

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