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Working in trade marks, we are often confronted with anxious clients who are facing serious issues with enforcing or defending their intellectual property rights.

Inevitably, the root of the problem usually leads back to the same thing – not doing searches before adopting and using the trade mark.

It is understandable when starting a new venture and adopting a new brand, that companies and sole traders are usually time and money poor. Many prefer to wait and see whether their new venture gets off the ground and, if so, that the brand is worth protecting.

Unfortunately, the reality is that it usually takes a few years to build up a reputation in the trade mark. And by then it is often too late to re-brand if the results of the search show that the mark is not available for use, not to mention the cost of rebranding which can often be significant.

A recent Federal Court of Australia decision, Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, highlights another compelling reason to ensure proper pre-filing searches are conducted.

In Australia, trade marks are protected both through registered rights, and through common law rights. This means that if a trade mark has not been registered, but it has been used honestly for a number of years, and a reputation in that trade mark has been acquired, then it may still be possible to Register the mark and/or defend infringement proceedings, on the basis of the common law rights acquired in that mark.

In particular, if you can show that you have been honestly using your unregistered trade mark for many years, concurrently with another trade mark owner using their similar trade mark, and confusion between the two marks has not occurred, then you may be able to achieve registration through demonstrating evidence of honest concurrent use.

This was the situation in the Insight Radiology case where the Trade Mark Applicant, Mr Pham, claimed that he had not infringed a third parties’ trade marks because he had been honestly using his trade mark for over three years concurrently with the registered trade marks and had therefore built up a reputation in the trade mark such that he could demonstrate evidence of honest concurrent use.

Davies J found however that there had been no honest concurrent use of the trade marks. Relying on the precedent set in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [293] it was found that there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark (our emphasis).

Speaking on the facts of this case, Davies J stated:

It cannot be said that there has been “honest” concurrent use of the Radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with Insight Clinical Imaging’s website and its similar marks. If Mr Pham was not aware of Insight Clinical Imaging’s marks before he had Insight Radiology adopt and commence to use the Radiology marks, it was because of the inadequacies in the searches that were conducted and lack of care taken.

The case highlights that if trade mark owners haven’t conducted thorough pre-filing searches, then they may not be able to rely on the common law rights in their trade mark accumulated over many years of use to defend infringement proceedings or to register their trade marks.

It is therefore safe to say that ensuring that proper searches are conducted at the outset, before a commitment is made to using the mark, remains the best investment you can make in your brand when embarking on a new venture.

A trade mark availability search conducted by a professional involves a comprehensive search of the trade marks register, and other common law searches through sites such as Google and ASIC. A professional search with an appropriately broad search strategy will identify not only use of the identical mark, but also a wide range of potentially similar marks, which won’t be visible through regular internet searches.

For more information on trade mark searching see the IP Australia website here or speak to a trade mark professional. 

Author: Amelia Boys

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