[3.7.7] PRIOR CONTINUOUS USE
As noted above in [3.7], Section 44(4) of the TMA states:
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Unlike s.44(3), this section does not inherently grant the Registrar any discretion.
Nevertheless the general discretion that may be exercised at the conclusion of an opposition under s.55 of the TMA exists and may be used to restrict the goods and services description. The rationale for such restriction is that the opposition may be made out under s.44 if a prior cited trade mark exists and the opposed application covers both similar goods or services or closely related goods or services for which there is, and is not, evidence of prior continuous use. In such circumstances the opposition is technically made out in whole. However if s.44 is the only successful ground of opposition then naturally it would be proper in such circumstances for the hearing officer to accept the application for only those goods and services for which s.44(4) applies rather than reject the whole application.
However the same rationale cannot apply to other forms of limitations. Although opponents have attempted to argue that a geographic limitation ought to be imposed when an applicant only provides evidence of prior continuous use in one geographic location(1) there is no basis for such limitation in the 1995 TMA. The question may have been answered differently under previous legislation in absence of a presumption of registrability, however now under the present legislation if prior continuous use is established for all the goods and services to which the application relates it is not open to the Registrar to uphold a s.44 ground of opposition. It does not matter whether the evidence of prior continuous use of the trade mark is substantial in volume or geographic range or not.
Prior Prior Continuous Use
As mentioned below at "[3.9] s.58A Prior Prior Continious Use", if an application has been accepted under s.44(4) of the TMA and an opponent can establish the owner of the cited conflicting trade mark has continuously used their trade mark in relation to the relevant goods or services prior to the applicant’s first date of use then a ground of opposition may be established under s.58A of the TMA.