Defensive trade marks – what are they?

In a typical trade mark application, you apply for protection over the goods and services that you use to prevent others in the marketplace from passing off your reputation and negatively impacting your brand. What happens though, when your reputation is so significant that any use of your trade mark, even in connection to goods and services unrelated to you, can affect your image? That’s where a defensive trade mark comes in. 

A defensive trade mark application is usually filed in relation to goods and services unrelated to the mark of the owner (or that the owner is unlikely to use at this stage). 

The key benefits to  a defensive trade mark is the extensive protection provides, as it can prevent the registration of similar trade marks in classes that the owner may not necessarily trade in. Defensive trade marks are also not subject to removal from non-use.  

For the public, parallels may be drawn between the unrelated goods and services of another party and those of the primary trade mark owner. 

Unrelated goods or services are those which are not directly related or fall under the same description. Therefore, many businesses that have built up their brand and reputation will apply to register for their mark in relation to unrelated good or services as a defensive trade-mark. 

Examples of some brands that currently possess defensive registrations include:

BONDS, CHANEL, LEVIS, NRMA, SHELL, VISA, VOGUE. 

For example, VISA has a defensive trade mark registered under class 39 Travel agency services excluding visa services.  

There are over 300 registered defensive trade marks listed on the Australian Trade Mark Search Register at the date of publication of this article.   

What are the benefits of having a defensive trade mark?

1. It is a pre-emptive (opposed to reactive) way of protecting a well-known registered trademark from infringement. It effectively blocks third party registration of similar trade marks for other goods  and/or services. This ensures that the scope for trade mark opposition, revocation, litigation and unnecessary time or costs expenditure is lessened. That is, it’s more cost-effective than bringing an action for trade mark infringement, misleading & deceptive conduct under Australian Consumer Law, or passing off under an action brought in relation to what’s called a Tort. 

2. The trade mark owner doesn’t have to use the defensively registered trade mark concerning goods and/or services for which registration is desired. Therefore, it provides wider and more extensive protection. 

3. A defensive trade mark registration may not be cancelled for non-use, unless the primary registration is cancelled or removed.

4. It prevents brand dilution and reputational damage from the public or others wishing to leverage the business’ brand reputation with their alternative goods and or services. As such, defensive registrations ultimately protect the intangible asset of goodwill and reputation. 

5. You may be able to use the defensive registration in making an allegation of trade mark infringement, where another business hasn’t registered their trade mark in the relevant class of goods and or services. 

Who can register defensive trade marks? What’s the process of registration?

Under s185 of the Trade Marks Act 1995 (Cth) a definition for a defensive trade mark is given and broadly outlines the circumstances under which an application for registration of a defensive trade mark may be made. 

IP Australia in its Trade Marks Manual of Practice and Procedure summarises these circumstances in more detail (see below):  

“The procedure for filing a defensive trade mark application is the same as for standard trade marks but with two additional requirements

• the registration number of the registered trade mark upon which the defensive application is based should be entered on the application form and

• evidence in support of the application must be filed.

In accordance with regulation 17.1, this evidence must be filed at the time of filing the application, or as soon as practicable after filing.

So, if your business wants to register a defensive trade mark, you will need to have a significant amount of evidence of trade mark “use” and reputation. This can potentially prove a costly exercise.  

The Trade Marks Office will take a variety of factors into account, including: 

• the goodwill of the trade mark and “use”.

• if the public would infer a “connection” (i.e. to be associated with) between the goods and or services of the primary owner who is applying for the defensively registered trade mark and the relevant goods or services their primary trade mark covers.
    
• The prevalence of other registrations for the same mark held by different owners.
    
• Any other additional materials to be included / which are relevant to the filing application. 
  

Requirements for filing a defensive trade mark in Australia

There are a few additional requirements for filing defensive trade marks in Australia:  

1. The Applicant must have already (at the time the application for a defensive registration is filed) a trade mark in the name of the Applicant and for the Applicant’s main goods/services. This earlier trade mark does not need to be registered in respect of the same or even similar goods or services as those sought by the defensive trade mark;  

2. The Applicant’s trade mark must have been used to such an extent, in relation to all or any of the goods or services in respect of which it is registered, that its use on the goods or services sought by the defensive registration would be likely be taken by consumers as indicating a connection between those goods and services and the owner of the registered trade mark. It is not a requirement that the trade mark is or in the name of a famous person, just that the trade mark has the requisite reputation; and 

3. Although the Trade Mark Acts 1995 provides that applications for filing defensive trade marks must include evidence in support of the application, or be provided as soon as practicable after the time of filing of the application, applicants can file evidence at any time within the 15 month period after receiving an adverse report.  

Evidence required

Applications for defensive trade marks may be rejected if the evidence provided is not likely to indicate a connection between the goods or services claimed and the business. In considering the evidence available, the following factors may be relevant:  

1. the goods or services claimed by the initial registration. Although not a requirement, applications are defensive trade marks are more likely to be accepted if they are applied for in regard to goods or services that are considered similar to the goods or services claimed by the initial application;  

2. if the initial registration is in respect of a wide number of goods or services, the subsequent defensive trade mark may be more likely to be accepted; 

3. in terms of evidence, while evidence provided over a longer period is more helpful, this can be supplemented by intense marketing of the trade mark over a shorter period; and 

4. the evidence must do more than establish that the trade mark should be well known or famous. There must be a genuine connection inferred in the course of trade between the applicant and the trade mark. To this end, the application should state the grounds upon which it claims that the necessary connection will be inferred. This can be assisted with supportive declarations from members of the relevant trades.  

Examination of a Defensive trade mark in Australia

The procedure for examination of a defensive trade mark in Australia is similar to that of a standard application, and is examined within 2-3 months of filing. This period can be expedited similar to a standard application.  

Find out more by contact our team of trade mark attorneys and trade mark lawyers today.

Related Articles