[3.7.5] HONEST CONCURRENT USE
As noted above in [3.7], Section 44(3) of the TMA states:
If the Registrar in either case is satisfied:
(a). that there has been honest concurrent use of the 2 trade marks; or
(b). that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Subparagraph (b) is dealt with at [3.7.6] below.
In relation to subparagraph (a), the term “honest concurrent use” is one which predates that TMA itself. The relevant factors for determining honest concurrent use include:(1)
(a). The honesty of the concurrent use;
(b). the extent of the use in terms of time,(2) geographic area and volume of sales;
(c). the degree of confusion likely to ensue between the marks in question;(3)
(d). whether any instances of confusion have been proved; and
(e). the relevant inconvenience that would ensue to the parties if registration were to be permitted.
As the term ‘honest concurrent use’ suggests, it is an essential requirement that the use is “honest” and the degree of this honesty is the most important factor.(4) Therefore from the perspective of an opponent it is not essential to prove dishonesty to assert that honest concurrent use has not been made out. Merely observing the absence of honesty being positively established is enough.(5)
Honesty in this context means “commercial honesty”.(6) The relevant factors to determine “commercial honesty” are:(7)
(a). whether the words which make up the trade mark are common, everyday words;
(b). the applicant’s subsequent conduct;
(c). the likelihood of confusion;
(d). the applicant’s knowledge of the opponent’s mark; and
(e). whether the adoption of the mark, and the continued use of it, was surreptitious.
If honest concurrent use is established the hearing officer is faced with a discretion. As indicated in the section he or she “may” allow the trade mark application to proceed to registration “subject to any conditions or limitations that the Registrar thinks fit to impose”. This may include a geographic limitation.