Can Multiple Parties Use the Same Trade Mark at The Same Time?

Angus

• 3 August 2021
• 4 August 2021
• 5 min read

It is possible to have similar or identical trade marks in the Australian trade marks database in some cases. Trade marks, for example, are registered in relation to certain items or services that fit into several categories. As a result, two identical marks with the same name that are registered by separate owners and cover distinct goods or services are feasible. For instance, one individual could register a name trade mark for cosmetic items and another for mechanic services. This could occur despite the fact that the goods/services and their respective classes are drastically different. Whether it is permitted depends on:

1. if the other company is in the same industry; 
2. whether the other company is in the same geographic market; 
3. who was the first to use the mark; and
4. who was the first to register the trade mark.

This article will explore some of the key considerations that determine whether multiple parties can use the same trade mark simultaneously.

Different Classification Registrations

While not unheard of, it is strange to see two trade marks that are functionally identical and cover the same services or goods. This is because there would be a property issue and a concern of who truly owns the mark. In Australia, an identical mark trying to cover equivalent goods or services can only have one trade mark owner. Even yet, under some circumstances, it is conceivable for two entities to register marks that appear to be similar.

The classes assist in determining whether two marks can remain on the register without the latter having to prove their right to register in the face of a comparable mark. The classes, on the other hand, are not the be-all and end-all. One of the primary goals of trade mark registration is to prevent customer misunderstanding between two brands. As a result, you might find the same goods/services in various classifications. Similarly, inside a single class, you might have unrelated goods/services.

Honest and Concurrent User

Another way two identical marks covering comparable items might coexist on the register is if the owners have been using them honestly and simultaneously (or if the later filer is actually a prior user). 

As an example, suppose Company One owns a trade mark for medicated skin products, and Company Two uses the same trade mark for identical items. Company One might be using it for sunscreen where the goods are related to a medicated skin product. However, if Company Two adopted its trade mark honestly and has been using it honestly for a period of time while Company One’s registration was active, they can coexist on the register.

You must present evidence to support a previous use or honest concurrent use scenario. Generally, this will be in response to an examiner’s report from IP Australia that identifies an earlier filed trade mark as a barrier to acceptance.

Claim of Established Reputation

Other reasons for opposition may include the opponent’s allegation that the submitted mark is confusingly similar to a brand or mark in which the opponent has a reputation. It is commonly understood that registering a trade mark gives the owner an absolute right to that trade mark. However, as this article demonstrates, it is not always that simple. Two distinct owners can own the same name from the start. There are also cases when they already use the same trade mark for a long time, even for comparable items. However, depending on the conditions, they can coexist if they have been using them simultaneously and honestly. 

Key Takeaways

When being faced with two of the same trade marks, the first step is to establish whether you are rivals with the company that owns the conflicting trade mark. If you are a rival, you will need to conduct additional research. However, there is not much to be concerned about if you are not competitors. The purpose of a trade mark is to avoid customer misunderstanding. You have a very minimal risk if there is no potential for customer confusion.

Before deciding whether multiple parties can use the same mark simultaneously, you will need to figure out who was the first to use the mark and who was the first to register it. The best-case scenario is that you were the first to use and register the mark. Alternatively, you might claim that you were the first to utilise the mark. This will ensure that you have the right to use the mark in the market where you were using it before the other company registered it.

If you have any questions about whether multiple parties can use the same trade mark simultaneously or you need trade mark legal assistance, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions