Honest concurrent use following Zip Co v Firstmac: Implications of IP Australia’s 2026 manual updates for trade mark applicants

In September 2025, we reported on the High Court of Australia granting special leave to Zip Co Limited to appeal the Full Federal Court’s decision in Firstmac Limited v Zip Co Limited [2025]. We argued that the High Court ruling will have implications on the availability of honest concurrent use under section 44(3)(a) of the Trade Marks Act 1995 (Cth), both as a potential prosecution strategy for trade mark applicants, and as a possible defence to infringement from the perspective of unregistered brand owners.

On 13 May 2026, the High Court handed down its long-awaited decision in Zip Co Limited v Firstmac Limited [2026] HCA 16 (Zip Co). Although the High Court clarified that “honesty” in the context of section 44(3) is a subjective test and provided some guidance on the factors to consider in establishing honest concurrent use, the practical impact of Zip Co on trade mark applicants and brand owners can be better gauged by considering the extent to which Australian trade mark examiners have adjusted their examination practice in the wake of Zip Co.

The impact of the Zip Co decision on honest concurrent use, trade mark rights and brand enforcement

The availability of honest concurrent use affects both:

• Trade mark applicants: if honest concurrent use is not available, then there would be fewer options for trade mark applicants to overcome objections raised during examination, defend third-party oppositions and obtain registration of their chosen trade mark. As a result, more trade mark applications could lapse, and more brands could remain unregistered in Australia despite maintaining an active presence in the marketplace; and
• Brand owners (both registered and unregistered): if honest concurrent use is not available, then there would be fewer options for unregistered brand owners to defend a third-party trade mark infringement claim. This could boost the confidence of registered brand owners in their ability to enforce rights against an alleged infringer, and even result in an increase in enforcement action being brought against unregistered brand owners.

What applicants now need to prove to establish honest concurrent use: A real-life example

On 19 June 2026, we received an adverse examination report, alerting us to the latest updates made to IP Australia’s Trade Marks Manual (Manual), which were published only two days prior. The report provided one of the first practical illustrations of how examiners are now assessing evidence of honest concurrent use in the wake of Zip Co. It also highlighted the types of information applicants must now provide to satisfy the updated requirements.

The report was issued after the applicant submitted evidence of honest concurrent use to overcome earlier conflicting registrations. The examiner accepted that the trade mark being applied for had been used for several years on the relevant goods, but the objection was maintained because the evidence did not address the types of information that are now central to establishing honest adoption and use of a trade mark.

In that regard, the Examiner referred to Part 28.3.3.1 of the Manual and quoted the following non-exhaustive list of circumstances relevant to establishing honest adoption and use of a trade mark, which should be addressed in evidence of honest concurrent use declarations moving forward:

• Was the applicant aware of the conflicting trade mark?
• What enquiries did the applicant make before commencing use of the trade mark?
• If the applicant did not make enquiries, what is the reason for this (and would someone in the applicant’s position have been reasonably expected to do more)?
• If the applicant was aware of the conflicting trade mark, why did they choose to proceed with use of the trade mark? For instance, did they genuinely believe that their use of their mark was unlikely to cause confusion?”

To elaborate on the above list of factors, Part 28.3.3.1 has also been updated to include the following principles in light of Zip Co:

1. Honesty is a subjective test, based on the applicant’s state of mind at the time of first use of the mark, and each subsequent use up to the filing date of the trade mark application, as assessed against the standards of ordinary, decent people.
2. An important factor to consider is the applicant’s knowledge of the conflicting mark, which will ordinarily weigh strongly against a finding of honesty. However, mere knowledge of a conflicting mark, by itself, will not prevent a finding of honesty.
3. Where the applicant was aware of a conflicting mark, it will be necessary to prove why their decision to proceed with use of their mark was still honest, including where the applicant had no intention to trade off the goodwill of the conflicting mark, and had cogent reasons or evidence to support a subjective belief that consumers would not experience confusion.
4. It is more likely that subjective honesty can be established where the applicant undertook reasonable searches, and the conflicting mark was not likely to have been identified.
5. Where the applicant had failed to undertake searches, it will be important to prove why their use of the mark was still honest. This may be harder to establish where the applicant’s experience or knowledge suggests they should be aware of the importance of searching the Australian trade marks register (Register) before adopting a mark.
6. A reckless or wilful failure to search the Register, for fear of what it might reveal, is a factor that strongly weighs against a finding of honesty.
7. Where the applicant’s experience of knowledge suggests that they were merely careless, or in other words, they honestly overlooked the importance of undertaking searches, this may help establish that their adoption of the mark was nonetheless honest.

What to know before adopting a new brand

The High Court's decision in Zip Co, and its subsequent application by Australian trade mark examiners, highlight the importance of conducting adequate due diligence before adopting and using a new brand. Before investing in a new brand, businesses should take the following key steps to place themselves in the strongest position to secure trade mark registration for key brand assets, and (if required) effectively defend any enforcement action by third parties:

For businesses, the message is clear: trade mark clearance searches, careful record-keeping and early professional advice are no longer just prudent risk-management measures, they may prove decisive in securing registration and preserving brand rights if a conflict arises. As the practical application of Zip Co continues to evolve, businesses should ensure their brand adoption processes are robust enough to withstand scrutiny from both trade mark examiners and third-party rights holders.