Patents Office rejigs honest concurrent use

The bottom line is that the office will accept applications based on honest concurrent use, notify the owner of the earlier right that this has taken place and deal with any oppositions under the normal rules. This is a major departure from the previous practice set out in the Archers decision, whereby an opposition would immediately and automatically result in the acceptance of the mark being withdrawn and the objection reinstated.

The factors to be considered for the new procedures follow the format set out in Alex Pirie & Sons Ltd ((1933) 50 RPC 147):
  • the extent of use of the mark for which registration is sought;
  • the degree of confusion likely to arise, including consideration of the entire scope of the [earlier] registration;
  • whether any instances of confusion have in fact occurred;
  • the honesty of the concurrent use (was the mark copied, adopted with knowledge of the earlier mark or used surreptitiously); and
  • the relative inconvenience if the mark becomes registered.
The announcement provides some useful guidelines on what will generally suffice for a claim of honest concurrent use (at least five years of use; the use does not have to be greater than the earlier mark but must demonstrate real commercial value; and the extent of the use must be directly proportional to the degree of confusion that is expected to arise). The evidence must be filed in the form of a statutory declaration. The announcement also states that use may be honest even if there is knowledge of the earlier mark (eg, if the applicant is seeking registration of its company name or extending use to another field without improper motive) - a new and rather far-reaching factor. 

Once an opposition has been filed by the holder of the earlier right, the usual rules will apply. If there is double identity, a refusal will be mandatory. If a likelihood of confusion is argued, the mere fact of honest concurrent use is not a defence, but can be a relevant factor. The opposition will be decided only on the basis of the evidence filed during the opposition proceedings, so the applicant must refile its evidence submitted at the examination stage and any additional evidence it wishes to rely on as part of the opposition proceedings.

This change follows on from a public consultation process

Niamh Hall, FRKelly, Dublin and Belfast 

A first version of this article was published by MARQUES on November 29 2011

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