Zip Co Limited v Firstmac Limited [2026] HCA 16 was published on Jade today, so I managed to have a good read of it this morning.
It’s amazing when the High Court judges break the law down to conceptualise it in a way I hadn’t really consciously thought of before.
They deliberate about the respective timings for assessing honest concurrent use, and they explain that the time is different depending on the context. If an applicant for a trade mark is using honest concurrent use as a basis for overcoming a s 44 objection, the relevant time for assessing the honest concurrent use is not the time of first use, or even each use, it is the filing date for the application.
On the other hand, if a defendant in a trade mark infringement case is using honest concurrent use as a defence to the infringement (i.e. if they had applied for registration, they would have been granted it on the basis of honest concurrent use, and as such their use is not an infringement) the relevant time for assessing the honest concurrent use is the date of each particular infringement.
See full extract from the judgement below:
“For these reasons, just as the time of the application for registration determines the time for the operation of s 44(3) for the purposes of the “application for the registration” to which s 44(1) relates,[47] so too the time of infringement under s 120 determines the time for the operation of the defences of honest concurrent use under s 122(1)(f) or s 122(1)(fa) read with s 44(3). Contrary to some of the submissions of the parties, the defences do not operate once and for all potential infringements based on the first potential infringement. In other words, since every occasion of the use of a mark in trade in Australia within s 120 can be a separate potential infringement,[48] the defences apply separately to each such occasion. It may be likely that the same answer will be given to whether uses are honest concurrent uses if the uses are similar and closely related in time. But this will not always be the case.”
This reinforces the benefits of trade mark filing, as it draws a line in the sand for the date for determination of honest concurrent use.
