The High Court has clarified the meaning of ‘honest’ within the expression ‘honest concurrent use’ as a defence to trade mark infringement1. After Firstmac registered the mark ZIP for financial products, Zip used substantially the same mark for its loan products. It was held that Zip had failed to prove ‘honest concurrent use’. The court noted (at [57]) that ‘honest’ is an ordinary English word which will generally take its ordinary meaning2. The person must ‘have a state of mind that is honest by the standards of ordinary, decent people’3. This may be proved by direct evidence of the person, or inferred from other facts and circumstances. Rejected was the so-called Robin Hood test which focuses on the subjective standard of honesty held by the infringer. Also rejected was any requirement that the person must realise they were in fact dishonest by the standards referred to.
Matt Freestone – International Support Programs matthew.freestone@ato.gov.au
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Footnotes:
1 Zip Co Ltd v Firstmac Ltd [2026] HCA 16; s 44(3) Trade Marks Act 1995 (Cth).
2 Peters [1998] HCA 7 [86] cited; cf Sofronoff[2025] FCA 1565 [206].
3 [58-60]; Macleod [2003] HCA 24 [137-138], Alex Pirie (1933) 50 RPC 147.