Brand owners seeking to expand their product offerings should conduct thorough trade mark searches to ensure their marks are clear for use in new categories.
In White International Pty Ltd v WHITES POWERSPORTS AUSTRALIA PTY LTD [2025] ATMO 157, the trade mark applicant, Whites Powersports, sought registration in various classes including 7, 8, and 9 for its logo:
The Applicant owned various trade mark registrations including the word WHITES in classes 12 and 35. It had operated a motorcycle and accessories wholesale and retail business in New Zealand for many years and entered the Australian market in 2014. Since 2015, it had sold its own branded motorcycle accessories under the marks WHITES MOTORCYCLE PARTS, WHITES POWERSPORTS and the logo:
In June 2021, it filed the trade mark application in classes 7, 8, 9, 11,12, 22 and 35 to reflect its expanded business and its updated logo.
The Opponent, White International, owned prior registrations for a logo mark comprising WHITE INTERNATIONAL in classes including 7, 8 and 9.
The Hearing Officer found that this new logo was deceptively similar to the Opponent’s trade marks and that some of the Applicant’s goods in classes 7, 8 and 9 and services in class 35 overlapped with those claimed in the Opponent’s registrations.
The Applicant sought to rely on its honest, concurrent use of its trade mark to argue for its acceptance despite this finding. It argued that its trade mark was a refresh of its earlier trade mark, and that there was no reason to doubt the honesty of its adoption.
But the Opponent argued that proper checks had not been undertaken prior to the adoption of the mark, and that its registrations were on the Register when the Applicant chose to expand its range of goods, and drop the words ‘motorcycle parts’ from its logo.
In assessing whether honest, concurrent use was established, the Hearing Officer referred to the comments of O’Callaghan J in The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299, [71] about the extent of trade mark searches under taken:
In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches than [the witness] says he did to ensure that his chosen name did not conflict with a registered trade mark.
The Hearing Officer found that Applicant’s application was more than just a refresh of an existing trade mark. They disagreed with the Applicant’s submission that it had not adopted the mark blindly.
The Applicant’s evidence is silent as to whether the Applicant did anything to inform itself of its position in relation to any earlier trade mark rights either on the Trade Mark Register or in the marketplace. Where a new trade mark is being adopted, particularly one that is being adopted for a broad range of goods and services, if the applicant expects to rely on honest concurrent use, the applicant must provide a commercially reasonable explanation as to why it believed it could use a mark without infringing the rights of any third parties. I acknowledge the Applicant’s belief that the Trade Mark was a refreshed version of earlier device trade marks, but in circumstances such as these where the Applicant has filed the Application for goods and services much broader than the Applicant’s Registrations and any claimed use of these registrations, an honest trader is expected to do more than what the Applicant did, which was essentially nothing, on the evidence before me.
This finding of a lack of honesty meant that honest, concurrent use was not established. Ultimately, however, the Applicant was able to obtain acceptance of its application for a limited range of goods and services that were found not to conflict with those of the Opponent.
This case is a reminder of the importance of conducting thorough trade mark clearance searches before an existing trade mark owner expands its product range, or a new mark is adopted. A trade mark applicant may struggle to obtain acceptance over a prior mark based on honest, concurrent use, if clearances searches are overlooked. Similarly, a defence to an infringement claim based on honest, concurrent use may fail in these circumstances.
