A trade mark application is usually rejected if there is a pre-existing registration for a substantially identical or deceptively similar trade mark relating to similar goods or services.
If, however, the applicant for registration has been using the trade mark since before the priority date of the pre-existing trade mark registration, and the use of the trade mark by the applicant or the applicant’s predecessor has been continuous, then the application will be accepted for registration. This preserves the general rule in Australia that the first person to use a trade mark is entitled to ownership.
In some circumstances it is possible for a trade mark applicant to secure registration even when there is a pre-existing registration for a substantially identical or deceptively similar trade mark relating to similar goods or services, and even when the applicant was not the first person to use the trade mark in Australia.
To obtain registration this way, the applicant will generally need to prove that the trade mark was chosen honestly and has been used honestly for a number of years, and that over that period of time there has been little or no confusion between the trade mark applied for and the trade mark of the pre-existing registration.
For example, it may be possible to show that the respective trade marks have been used in different areas of Australia, or that the goods or services have been offered in non-overlapping markets, or that there are other circumstances which have reduced the likelihood of confusion.