Recent decisions from the Federal Court of Australia provide useful guidance for trade mark searching in Australia that may be become important when mounting an honest concurrent use defence to trade mark infringement. The tips offered by these judgements serve as a reminder for any business owner or prospective trade mark applicant of prudent pre-filing due diligence. In particular, they emphasize the importance of adequate trade mark searches in Australia.

The two cases are The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd [2024] FCA 1299 (“The Practice”) and Firstmac Ltd v. Zip Co Ltd [2025] FCAFC 30 (“Firstmac”). This article will not recount the details of each case in detail but aims to provide a high-level overview of the decisions to provide practical guidance.

In The Practice, the trade mark owner held a registration for the following composite mark in relation to accountancy and related services.

The defendant provided accounting and related services under the following sign:

The defendant was a sole practitioner and asserted honest concurrent use as a defence to infringement. The defence relied upon pre-filing searches to prove the honesty of the current trade mark use.

The pre-filing search conducted by the defendant used the search terms “THE PRACTICE (IT AND ACCOUNTANCY)” and “The Practice Business Advisers and Tax Practitioners”. The defendant did not conduct a search for THE PRACTICE. The dependent searched Internet and company/business name registers only, and not the Australian Trade Marks Register (apart from 2001 checks well before use commenced). No results were identified using this search strategy. In defence of these limited searches, the defendant argued that “no more could reasonably be expected of a “one-man company” and that it “… should not be held to the same standard of what might be expected from a large multinational corporation or business.” The judge wholly rejected this argument by stating “I cannot accept this submission. In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches….”. The court also remarked on the absence of positive hits “all his searches returned no results, and little wonder when the search terms were so lengthy and specific.”

In Firstmac, it was asserted that Zip Co infringed Firstmac’s trade mark registration for the mark ZIP in relation to financial affairs (loans). The defendant adopted and used variant marks containing ZIP for buy now/pay later services. Firstmac sued for trade mark infringement and the defendant claimed a defence of honest concurrent use.

The defendant conducted Internet searches which did not identify Firstmac’s mark and filed applications for the variant marks containing ZIP. The Australian Trade Mark Office issued examination reports citing Firstmac’s registration as a conflicting mark. Saliently, the issuance of the examination reports was prior to the defendant commencing use of the marks. That is, the defendant knew of Firstmac’s registration before it started using their marks. The court concluded that with this knowledge the use by the defendant was not honest use. The defendant attempted to rely upon the Internet search to support their case. The court rejected this argument and stated it was an expectation that an honest trader would do more than the Internet searches conducted by the defendant.

It is known that pre-filing trade mark searching in Australia has benefits including mapping the competitor landscape and freedom to operate risks as well as assisting to establish honest concurrent use as a defence to infringement.

The above cases show that thorough searches must be conducted to establish honest concurrent use and to keep in mind the following tips:

• Avoid lengthy/complex search queries.
• Conduct Trade Marks Register searches.
• Don’t rely on Internet searches only, no matter how comprehensive these searches may be.
• Searches should be conducted before commencing actual use of the trade mark.

Please contact us if you require assistance with trade mark searching or filing.