What is an Honest Concurrent Use trademark?

Scenario: Party A has been trading for a number of years under a particular brand. The director decides that it may be a good idea to obtain a trademark registration for the brand. A search reveals a registered trademark for Party B, which is very similar to Party A’s brand and which has been registered in classes deemed similar to the goods and services which Party A offers. What can Party A do?

The examination of trademarks by the South African Trade Marks Office is done in order of filing. Thus, if two marks are deemed confusingly similar, the trademark with the earlier application date should be accepted whilst the latter should be provisionally refused. This would be bad news for Party A.

Luckily, the Trade Marks Act has a section which deals with this – in terms of Section 14, an applicant may file a trademark on the basis of “honest concurrent use”. This section allows a trademark to be registered even when it offends against sections 10(6), 10(14), 10(15) or 10(17). These sections would ordinarily preclude the registration of a trademark.

Simply put, the applicant needs to prove that the adoption of his trademark was honest and concurrent and needs to submit evidence (in the form of an affidavit) showing five years’ worth of honest and concurrent use prior to the date of application. The affidavit needs to address the following points (as set out in Alex Pirie & Sons Limited (1933) 50 RPC 147):

  • the degree of confusion likely;
  • the fact that the choice of the Applicant’s trademark was honestly made;
  • the extent of the honest concurrent use;
  • whether or not there has been actual confusion; and
  • the nature of the respective trades.

The Trade Marks Office will consider the evidence submitted and, if satisfied, accept the trademark as a Section 14 application. The formalities associated with a section 14 application will then need to be adhered to in order to progress the mark to registration. It must be borne in mind that the trademark can still be opposed by the prior applicant (or any other party for that matter).

Given that an application for honest concurrent use needs to be made at the time of filing, it is very important to conduct a search prior to filing to try identify any potential issues and to determine whether an HCU application is necessary.

Whilst the cost involved in an honest concurrent use application will be higher than an ‘ordinary’ application (due to the preparation of evidence and the additional formalities involved), it is an effective way of registering trademarks which ordinarily wouldn’t be capable of registration.

Latest Specials
  • Register provisional patent

    R9,950 + vat

    Find Out More
  • Save up to 70% on renewal fees

    Save up to 70% on patent renewal fees / annuities by paying them online

    Renew Patent
  • Online SA design filing

    Only $299

    Visit Iptica
  • Patent search

    R4,950 plus vat

    Find Out More
  • Online SA trademark filing

    Only $199

    Visit Iptica
  • Prototype

    3D CAD drawings, renderings, poster, plastic prototype

    Find Out More
  • Register a Trademark in South Africa

    R3,450 + vat

    Find Out More
  • Patent Pending Number

    Only $199

    Visit Iptica

Get started with the patent process

Get in touch

Contact us

Intangible Consulting (Pty) Ltd.
9 Kruger St
Oaklands
Johannesburg
South Africa

T +27 (0)11 483 1439
T +27 (0)11 483 3128 (alt.)
C +27 (0)83 233 4582
F +27 (0)86 627 0055
info@ideanav.co.za