Australia - Defensive Trade Mark Registration
By Karen Hayne, Partner
9 August 2007
What is a Defensive Trade Mark
A defensive trade mark can be applied for by a trade mark owner of a well known trade mark for goods and/or services that are not intended to be used by that owner. The purpose of filing a defensive application is to reduce the possibility of other traders using the trade mark for unrelated goods or services. The use of the same trade mark by third parties may cause confusion in the marketplace by persons being led to believe that the goods/services of the third party are owned by the owner of the well known trade mark.
Examples of defensive trade marks on the Register in Australia include VEGEMITE for textiles, BIG MAC for charity services, NIKE for beers, food, electronic equipment and eyewear, COKE for printed matter and MOBIL for many goods and service classes on the Register.
A defensive trade mark differs from a traditional trade mark, as only trade marks considered well known will attain a defensive trade mark registration; the trade mark may be registered for goods/services which have not been the subject of use of the trade mark and importantly, a defensive trade mark is never vulnerable to removal from the Register for non-use. Otherwise, a defensive trade mark will operate in a similar manner to a standard trade mark registration. For example:
- A defensive trade mark can be cited by the Trade Marks Office in an adverse report in connection with a later filed trade mark application and act as a block to registration of such a trade mark;
- An owner of a defensive trade mark can rely on the defensive trade mark in opposition proceedings;
- Although there have been no reported cases in Australia to date, infringement proceedings are available to owners of defensive trade marks both in respect of identical/similar marks used for the goods and services the subject of the defensive trade mark (section 120(1) of the Trade Marks Act ("TMA")) and in respect of closely related goods/services or goods/services of the same description (section 120(2) of the TMA).
What is Required
A defensive application must be based on an existing Australian registered trade mark. If a person does not have a standard Australian trade mark registration, then a defensive trade mark application will not proceed to registration. A defensive trade mark application can be filed for goods/services outside the scope of the registration/s on which the defensive application is based.
At the time of filing an application for a defensive trade mark, or soon after the filing date, evidence must be produced that shows that the unrelated goods and/or services claimed in the defensive trade mark have a connection with the registered trade mark and the owner of the trade mark. Evidence of use usually includes a statutory declaration claiming the reputation gained in the trade mark in Australia. If the Trade Marks Office is not convinced that there is an obvious connection, or that persons would not be confused into thinking that a mark used for the unrelated goods/services is owned by the owner of the well-known trade mark, then the application will likely be rejected.
Why Seek Defensive Trade Mark Registration
Well known trade marks are afforded additional protection (even if not the subject of a defensive trade mark) pursuant to section 120(3) of the TMA. That section allows a trade mark owner to take infringement proceedings in respect of use of an identical or similar trade mark in relation to unrelated goods/services, on the basis that the trade mark is well known, such that the use of the infringing mark would likely be taken as indicating a connection between the unrelated goods/services and the owner of the well known trade mark.
The advantage of a defensive trade mark registration is that the evidence as to the extent of the reputation of the well known mark need only be submitted for the purpose of obtaining the defensive trade mark, and not each and every time that a case under section 120(3) is submitted. Once a defensive trade mark is obtained, should an infringement occur, the trade mark owner will not need to prove its reputation, and can simply rely on the defensive registration and otherwise show unlicensed use of a trade mark which is substantially identical or deceptively similar to that registered. This can provide a trade mark owner with a more cost effective and efficient method of protecting its brand.
In addition, as is pointed out above, the defensive trade mark may also act as a block to identical/similar trade marks sought to be registered in relation to goods/services for which the trade mark the subject of the defensive trade mark is not currently being used and the defensive trade mark will not be vulnerable for removal for non use.
Conclusion
We would be happy to consider and assist you with particular defensive trade mark applications.