Honest Concurrent Use In Australia: What It Means And How It Works

If you’ve tried to register your brand as a trade mark in Australia and the examiner has flagged a conflict with an earlier mark, you’re not alone. It’s a common speed bump for growing businesses.

One pathway that may still get your trade mark over the line is called “honest concurrent use”. It’s a specific ground under Australian law that can let two similar marks coexist if certain conditions are met.

In this guide, we’ll explain what honest concurrent use means, when it’s worth pursuing, the evidence you’ll need, alternatives if it’s not the right fit, and practical tips to protect your brand from day one.

What Is Honest Concurrent Use Under Australian Trade Mark Law?

Honest concurrent use is an exception that lets IP Australia accept a trade mark application even if it’s similar to an earlier registered mark for the same or closely related goods or services.

In simple terms, your application has run into a section 44 objection (similarity with an earlier mark). But if you can show you’ve been using your mark honestly, alongside the earlier mark, without causing real confusion in the marketplace, the Registrar can exercise discretion to accept your mark.

To succeed, you’ll generally need to show:

• You adopted and used your mark in good faith (no attempt to copy or trade off another brand’s reputation).
• There’s real, continuous use of the mark in Australia for your goods or services.
• The coexistence has not caused significant consumer confusion.
• Any risk of confusion can be appropriately managed (for example, by limiting the specification or the geographic scope, in some cases).

It’s a discretionary decision. Even with strong use, IP Australia will consider the nature of both marks, how the goods/services are sold, and whether consumers are likely to be misled.

When Should A Small Business Rely On Honest Concurrent Use?

Honest concurrent use is not the first tool to reach for - it’s usually a strategy when your application is blocked by an earlier mark and simple tweaks or arguments won’t resolve the issue.

It’s typically worth considering if:

• You’ve used your mark openly for a meaningful period (often years) in the same market.
• You can document that use with clear, dated evidence.
• You did not copy the earlier brand and chose your mark independently.
• Your customers and channels (e.g. wholesale vs retail, different sectors) reduce the practical risk of confusion.
• You’re prepared to narrow your goods/services description if that will help both brands coexist safely.

If your brand is relatively new, or if the other mark is very strong and close to yours, honest concurrent use may be a long shot. In that case, it’s often better to explore alternatives such as a letter of consent, demonstrating earlier use, or even a brand pivot to avoid long, costly disputes.

It’s also worth remembering that registering a business name or company name does not give you trade mark rights. If you’re just starting to think about brand protection, it’s best to prioritise a trade mark filing and consider the right trade mark classes from the outset.

How To Prove Honest Concurrent Use To IP Australia (Step-By-Step)

If you receive an adverse report raising a section 44 objection, you can respond with evidence and submissions supporting honest concurrent use. Here’s a practical way to approach it.

1) Map The Objection And Your Options

Identify the earlier mark(s), the overlapping goods/services, and how similar the marks are in look, sound and meaning. Consider whether a narrower specification (or different classes) would remove or reduce the conflict. If not, plan your honest concurrent use case.

2) Set Your Use Timeline

Note when you first began using the mark in Australia and how the use has progressed. A clear, chronological timeline will anchor your evidence and help the examiner understand your journey.

3) Gather Dated Use Evidence

Collect real, dated materials showing genuine use in the ordinary course of trade. Useful items include:

• Invoices, purchase orders and sales reports using the mark.
• Product labels, packaging, menus, brochures and price lists.
• Website screenshots (with archive dates), social media posts and ads.
• Media mentions or reviews referencing your brand.
• Trade show materials and photos of signage or point-of-sale displays.
• Sworn declarations from you and key staff explaining the use.

If you need help assembling a strong record, it can be useful to follow a structured approach to evidence of prior use so your documents clearly support your claims.

4) Explain The Marketplace Context

Paint a picture of how your goods/services are sold and to whom. Clarify price points, sales channels (online, wholesale, in-store), and typical customers. If your channels or audiences differ meaningfully from the earlier registrant’s, make that clear.

5) Address Confusion (Or The Lack Of It)

If you’ve coexisted for some time without substantive confusion, say so and support it. For example, refer to customer enquiries, support logs, or distributor feedback. If there have been occasional misdirected enquiries, acknowledge them and explain how they were handled, and why they don’t indicate widespread confusion.

6) Propose Sensible Limitations If Needed

Sometimes, narrowing your goods/services, specifying channels, or clarifying the nature of your offering helps. If a limitation would materially reduce risk without undermining your business, it can strengthen your case.

7) Prepare Clear Submissions

Bring it together in a concise declaration or submission: how you chose the mark, how long and where you’ve used it, the nature of the market, why consumers can tell the brands apart, and why acceptance won’t harm the public. Attach your evidence with an index and cross-reference it in your statement.

If an examiner has already issued an objection, tailored guidance on responding to an adverse report can be critical. Many applicants benefit from targeted adverse report advice to refine their evidence and strategy.

Alternatives If Honest Concurrent Use Won’t Work

Honest concurrent use is powerful but not always the best path. Here are common alternatives that often resolve a section 44 problem faster or with more certainty.

Letter Of Consent And Coexistence Agreements

A letter of consent from the owner of the earlier mark can pave the way to acceptance. In many cases, both sides also sign a coexistence agreement to set clear boundaries on how each mark will be used, which further reduces risk.

If coexistence involves permissions across channels or territories, an IP Licence can formalise the arrangement and protect both parties.

Prior Continuous Use

If you used your mark continuously before the other party’s filing date, you may rely on prior use as a standalone exception. The evidentiary burden is similar, but the legal pathway is different. This can be a strong option if your use clearly predates theirs and has been consistent.

Other Circumstances And Discretion

Even beyond honest concurrent use, there are “other circumstances” where the Registrar may accept an application, such as where the overlap in goods/services is minimal, or where the overall risk to consumers is low. Tailored submissions can help here too.

Adopt A Distinctive New Mark (Or Adjust Your Current One)

Sometimes the commercial answer is to pivot. If your mark is young and the conflict is with a well-known brand, a new, more distinctive mark can save time and cost and strengthen your protection in the long run.

If you’re choosing a new brand, consider filing promptly and think strategically about your classes so your protection matches what you actually sell.

Clear The Path Early

Before you invest in packaging, signage and a website, conduct clearance checks and get your trade mark application on file. Early filing is still the best way to avoid conflicts and secure rights. When you’re ready, you can register your trade mark and set your brand up for growth.

Risks, Limitations And Common Pitfalls

It’s important to go in with eyes open. Honest concurrent use is not a free pass, and there are risks to manage.

• Discretionary outcome: Even with years of use, the Registrar might still refuse if the marks and goods/services are very close.
• Opposition risk: If your application is accepted, the owner of the earlier mark can still oppose. Be prepared for that possibility.
• Narrowing your scope: You may need to accept a more limited specification to reduce consumer risk, which can affect future plans.
• Evidence overload: Dumping unstructured documents rarely helps. Curate, date and explain your evidence so it tells a clear story.
• False comfort from business names: Registering a business or company name doesn’t grant brand exclusivity. A trade mark is the legal tool that protects your brand against copycats, as discussed in the difference between a business name vs company name.

If your application is still early, consider using IP Australia’s pre-assessment pathway to check the waters and refine your application strategy. Many founders also start with a staged approach like Trade Mark Headstart to identify issues before committing to a full filing.

Practical Tips To Avoid Collisions In The First Place

While honest concurrent use can help in a pinch, prevention is better than cure. These practical steps reduce your risk of conflict and strengthen your position if an issue arises.

• Choose a distinctive brand: Made-up words or unusual combinations are easier to register and enforce than descriptive or common terms.
• Search early: Do quick checks on IP Australia’s database, domain availability and major marketplaces. If results look risky, consider alternatives.
• File promptly: Early filing secures a priority date and can deter others from adopting similar marks.
• Match your coverage to your business: Select the right classes and a precise goods/services specification so your registration mirrors your actual offerings.
• Use and document: Use your mark consistently and keep dated records. Good housekeeping today becomes powerful evidence tomorrow.
• Plan for growth: If you’ll expand into new lines or markets, keep your portfolio up to date with new filings when needed.
• Get help when it matters: If you receive an examiner’s report raising section 44, targeted adverse report advice can save time, cost and uncertainty.

Finally, make sure your trade mark strategy aligns with your broader brand strategy. For example, if you license your brand to collaborators, a clear IP Licence sets the ground rules and protects your goodwill.

Frequently Asked Questions

Does Honest Concurrent Use Guarantee Registration?

No. It’s a discretionary pathway. Strong, well-organised evidence and thoughtful submissions improve your chances, but acceptance isn’t automatic.

How Long Do I Need To Have Used My Mark?

There’s no set minimum, but the longer and more continuous the use, the stronger your case. Years of consistent use with no meaningful confusion is a persuasive story.

Can I Rely On Honest Concurrent Use If I Changed My Logo Or Packaging?

Yes, as long as the trade mark you’re seeking to register is the one you’ve actually used (or a substantially identical “brand essence”). If you rebranded significantly, you may need to adjust your evidence or strategy.

Is It Cheaper To Rebrand?

Sometimes. If the conflict is with a strong, close earlier mark and your use is recent, a creative rebrand can be faster and less risky than a contested pathway. Weigh the legal costs against the commercial costs of changing course later.

Will A Trade Mark Protect Me More Than A Business Name?

Yes. A registered trade mark gives you enforceable rights to stop others using conflicting brands for the same or related goods/services. A business name is largely an administrative requirement and doesn’t give exclusivity, which is why many businesses prioritise a trade mark application that covers the correct classes.

Key Takeaways

• Honest concurrent use can overcome a section 44 conflict if you can show genuine, good‑faith use alongside an earlier mark without real confusion.
• A strong case relies on clear, dated evidence, a realistic market story, and (where helpful) sensible limitations to reduce consumer risk.
• Alternatives like consent letters, coexistence agreements, prior continuous use or a strategic rebrand may resolve conflicts more quickly.
• Trade mark rights are different from business or company names - register your mark early and choose the right coverage to protect your brand.
• Prevention beats cure: pick a distinctive brand, search early, file promptly and keep records of real-world use.
• Targeted support on objections and evidence can materially improve your prospects of acceptance and reduce overall costs.

If you’d like a consultation on trade mark strategy or responding to an examiner’s report about honest concurrent use, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no‑obligations chat.