28/05/2026
After a three-year legal battle, the High Court have handed down their decision in Zip Co Limited v Firstmac Limited HCA 16 (ZipCo Case).
The ZipCo Case has shed some light on the defence of ‘honest concurrent use’ to trade mark infringement including when it is to be assessed and the limits of an alleged infringer seeking to rely on it.
Trade mark infringement
A person infringes a registered trade mark when they use a trade mark that is substantially identical with or deceptively similar to the registered trade mark in relation to the same or similar goods or services in which the trade mark is registered (section 120, Trade Marks Act 1995).
However, sections 122(1)(f) and 122(1)(fa) of the Trade Marks Act provide a defence to infringement in circumstances where the person would obtain registration of the trade mark if they were to apply for it. These defences are read in conjunction with section 44(3) which allows the Registrar to accept an application for registration if there has been “honest concurrent use” of the trade mark.
ZipCo Facts
- Firstmac, a non-bank lender company, registered the word “ZIP” as a trade mark in 2004 over financial affairs (loans) in class 36.
- In October 2013, ZipCo attempted to register the trade mark “ZIP MONEY” in respect of ZipCo’s new online short-term lending products. The “ZIP MONEY” application was rejected because of its similarity to the Firstmac registered mark and an Adverse Report was issued.
- Despite receiving the Adverse Report, ZipCo continued to use as trade marks various signs containing the word “ZIP” over their products. Years later ZipCo tried to get the Firstmac mark struck off the register for non-use.
In dismissing the appeal, the High Court found that ZipCo had not acted honestly in their use of the “ZIP MONEY” trade mark. The High Court concluded that ‘honesty’ is a threshold requirement for the s122(1)(f) and s122(1)(fa) defences. Honesty is to be assessed by reference to the defendant’s state of mind against the standard of ordinary, decent people. While mere knowledge of a competing mark will not preclude a finding of honesty, a person may have a stronger case to establish honesty if the person had no knowledge of the earlier mark at the date of alleged infringement.
Key takeaways
- The “concurrent” use to which s 44(3)(a) refers is concurrent use at the date of potential infringement, not at the time of filing a trade mark or at the time a party is seeking to rely on the defence.
- Every separate occasion of ‘use’ of a trade mark can be taken as a separate potential infringement and therefore the defences must be applied separately to each occasion – a person cannot point to a single honest act to defend all instances of potential infringement.
- Part of a prospective business’s due diligence in commencing operations and adopting a trade mark should include a search of the Trade Marks Register. This due diligence should involve making records of:
- what searches were conducted and when; and
- the decision making process (to proceed or not proceed with the adoption of a trade mark and why).
- The courts will not look kindly on an alleged infringer who is made aware of the existence of an earlier registered similar mark and yet proceeds to adopt a similar trade mark anyway
In addition to our trade mark registration services, Griffin Legal’s experienced IP team can help you conduct trade mark due diligence and provide advice on the registrability of your trade mark to set you up for success.