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What is the priority in a trade mark between competing claims in the mark? |
- A trade mark will not be able to be registered if there is an identical or substantially similar trade mark already on the Register (owned by another party) for the same or similar goods or services.
- However if you have used the trade mark before the registered trade mark or honestly used the trade mark for sometime (usually about 3 years) despite the registration of the other trade mark, then the Trade Marks Office may also allow registration of your trade mark – provided you can prove the prior or honest concurrent use with the Office.
- You may also obtain registration of your trade mark despite another identical or similar trade mark already on the Register if the owner of the registered trade mark gives you their express consent.
- You may also obtain registration if you can prove use of your trade mark before the registration of the other trade mark.
- Sometimes a party can oppose an application of a trade mark if they can prove they had a reputation in the trade mark before the application of the other mark and because of this reputation in the trade mark it is likely to cause confusion to customers if the applied for trade mark is registered even if it is not the same goods or services applied for.
- It may also be a defence to a trade mark infringement action if you can prove that you also have some rights in the trade mark and that if you had applied for the trade mark it would likely have been registered.
- It is a defence to a trade mark infringement action if you also have a trade mark registered that is identical or substantially similar to the first mark.
- It may also be a defence to a trade mark infringement action if you have continuously used the trade mark for identical or similar goods or services from a time before the use and registration of the registered trade mark.
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Trademarks
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Sydney NSW 2000
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Sydney NSW 2001
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