What constitutes the “prior use” of a trademark?

This article first appeared on July 15, 2011.

What constitutes ‘prior use’ of a trademark? I have applied to register a trademark in Australia that is the same as one in the US. I can’t find anywhere they have used it or even suggested they will be using it in Australia but now they are threatening legal action.

Firstly, let me say that this is not a straightforward situation.  Particularly if they are threatening or are taking legal action against you, you should consider speaking to a specialist trademark litigator about what to do.

Now, I spoke to my colleague down the hall who just happens to be a trademark litigator, Tim O’Callaghan, and here is where we think you stand.

Generally, the person who is first to apply to register a trade mark in Australia has better rights to the mark in in this country provided someone else:

• Had not previously used the mark  in relation to the same or similar goods or services in Australia (even a small amount of use before the filing date would be enough).
• Although not using the mark in Australia, has a reputation here in the market due to its use overseas.

  This can happen due to cross country promotions (including through the internet) or because people travelled overseas from Australia and came to know of the mark that way.

We ran a case last year for an Australian company that registered and used a mark in Australia for a brand of energy drink which was famous in the US, but had not been used in Australia and had barely been heard of in Australia.

We eventually won that case because the US company was not able to prove that it had sufficient reputation in Australia.

So, basically, you are entitled to do what you have done, provided the US company cannot prove these aspects of prior use or reputation in Australia.

From our experience, the US company may bring lots of evidence of use and/or reputation in Australia which you may not be aware of at the moment, so there are risks.

Also, it may take some time and cost for you to defend their claims.

The bottom line therefore is that although you can do what you have done, be aware that if you are challenged you will have to defend your position.