[3.7.6] OTHER CIRCUMSTANCES
As noted above, a section 44 ground of opposition may also be overcome on the basis “that, because of other circumstances, it is proper” for the Registrar to accept the trade mark application for registration.
As a general guide, it has been said that “other circumstances” may comprise of “any aspect of the applicant’s use tending to minimize the risk of confusion or showing particular hardship”.(1)
Hence a common application of this subsection has been in circumstances where although the technical requirements of honest concurrent use have not been made out “other circumstances” fulfil similar the objectives that the honest concurrent use doctrine was aimed to serve. For example, it may be that there was significant use of the trade mark by entities related to the applicant but not the applicant itself.(2)
It is foreseeable that the subsection may have applications beyond addressing the same objectives as the honest concurrent use doctrine. For example, it is commonly used during examination of applications to allow acceptance based the provision of a letter of consent to use and registration from the owner of a prior conflicting trade mark. However it is clear it will only be “proper” for a hearing officer to apply the subsection to allow registration in accordance with the established principles of the trade mark registration system created under the TMA. This includes maintaining the integrity of a register of trade marks which accurately reflects the origins of goods and services and hence does not mislead the public. It is essential that the register “is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied”.(3)
As with honest concurrent use, if the hearing officer is presented with such “other circumstances” he or she has a discretion. The hearing officer “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.