Section 58A applies in circumstances where a mark has been accepted for registration with the application of s 44(4) TMA. It is a relatively new ground of opposition.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) stated that the new s 58A was needed to enable the owner of a trade mark that is deceptively similar to another trade mark to oppose its registration on the basis of “absolute first use.”
Prior to this amendment, the owner of the earlier registered trade mark had no basis upon which to oppose registration of a deceptively similar mark accepted under s 44(4) TMA (continuous prior use) even where the earlier registered owner’s use pre-dated that of the accepted application. This was because, in a case of disputed claims to proprietorship nothing less than substantial identity between the two marks will suffice: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 513 per Gummow J.
In order to succeed under s 58A, the opponent needs to show that its (continuous) use of its trade mark predates the use of the trade mark which is the subject of the accepted application.
The deceptive similarity of the marks will usually not be in issue as the examiner’s acceptance pursuant to s 44(4) assumes deceptive similarity. The issue therefore is the earliest date of the opponent’s use of its mark and whether that use has been through to the priority date of the application.