The need for Australian businesses to maintain records of trade mark searches and evidence that consumers would experience no confusion before adopting a brand have never been more important.
Following the High Court’s decision in Firstmac,1 Courts are increasingly expecting businesses to show they did their homework before adopting a brand, including taking reasonable steps to check for existing trade mark rights, to avail themselves of the statutory honest concurrent use defence2 to trade mark infringement. The question in Firstmac focused largely on what are such reasonable steps.
The High Court confirmed that whilst two businesses can sometimes end up using similar trade marks independently and in good faith, the later business must still be able to demonstrate it used its brand honestly and without intending to mislead customers. The issue in Firstmac was how to demonstrate the honesty requirements at the relevant time. The Court found that the time at which the defences of
