The Irish Patents Office has decided to retain the changes in the practice regarding ‘honest concurrent use’ introduced in April of this year.

THE principle of ‘honest concurrent use’ allows a business to register a trade mark which would otherwise be in conflict with a mark that has already been registered.

A notable example of this occurred back in 1906 when the then well-known company General Electric Company Limited (GE UK) registered as a trade mark ‘GEC’ in block capitals. In 1907, the American giant General Electric Company (GE US) registered as a trade mark the same initials in script enclosed in an ornamental circle (the rondel mark). Subsequently, GE UK registered its initials ‘GEC’ in script as a trade mark. At the time, both companies had strong domestic and worldwide trade which ultimately led to direct competition with one another. Inevitably, GE UK brought proceedings to remove the rondel mark from the Register.

The case was ultimately decided in 1972 in the British House of Lords which permitted GE US to remain as the registered proprietor of the rondel mark containing ‘GEC’ despite the earlier GE UK mark. The decision was based on the doctrine of honest concurrent use. The House of Lords stated that “a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of the mark”. Here in Ireland, section 12 of the Trade Marks Act 1996 provides that the Controller of Patents, Designs and Trade Marks (the Controller) shall not refuse an application for a new mark where honest concurrent use has been shown to his satisfaction, unless an objection is raised by the proprietor of the earlier mark in opposition proceedings. The practice of the Irish Patents Office (IPO) had been that if the proprietor of the earlier registered mark did file an opposition to an application for a new mark, which had been accepted on the basis of honest concurrent use with the earlier mark, the Controller would automatically refuse the application for the new mark. That is no longer the case.

On 28 April 2011 the IPO announced that it had suspended this policy, and stated that such oppositions would proceed and be processed like any other opposition, pending a period of consultation. It is understood that the IPO will publish a report in November 2011 on the findings of the consultation and will announce that it will be retaining the practice of processing all oppositions in the same manner, subject to the introduction of a number of small procedural changes. It is not yet known what these procedural changes might be but it is expected that they will be announced and implemented before December 2011.

In deciding whether a mark has been in honest concurrent use with an earlier mark, the Controller considers factors such as the time and quantity of use of the trade mark, the breadth of the geographic area of trade, the honesty of the concurrent use, whether instances of confusion have been proven in the marketplace, and the relative extent of inconvenience caused if the mark were registered.

The effect of the decision to maintain the current policy is that, subject to the introduction of small procedural changes for oppositions to an application for a new mark, which had been accepted on the basis of honest concurrent use with the earlier mark, all oppositions now proceed on the basis of Rules 18 to 25 of the Trade Mark Rules 1996, as illustrated in the diagram below.

Clearly, the current practice has significant time and cost implications for a party wishing to oppose an application based on honest concurrent use, when compared with the old practice. As a result, any trade mark proprietor considering opposing such an application may wish to consider approaching the applicant with a view to resolving the situation amicably, where possible, for example, by agreeing amendments to the application or negotiating a settlement agreement for coexistence. The benefits of the current practice are that the applicant has a right to be heard and the Controller has a degree of discretion in deciding whether the mark can proceed to registration.

Practitioners and proprietors alike need to be aware of the impact that the decision to retain the current practice will have on those seeking to protect their marks.

Click here for a diagram.