If you have a trade mark registration which has been used on the goods and/or services covered by the registration to such an extent that you consider that any unauthorised use of the trade mark for other goods or services would suggest a connection between you and those other goods or services, then you may wish to consider filing a trade mark application for a defensive trade mark.
Purpose of defensive registration
The purpose of defensive trade mark registration is to:
- Provide owners of trade marks which have been extensively used in Australia with protection against the misuse of the trade mark in a manner which might diminish the value or reputation in that trade mark; and
- To protect consumers from confusion and deception which might result from a third party appropriating a trade mark which has been extensively used in Australia.
Rights obtained as a result of a defensive registration
The owner of a defensive trade mark registration has the right to obtain relief under the Trade Marks Act 1995 if the trade mark has been infringed.
In contrast to a standard trade mark registration, there is no requirement for the owner of a defensive registration to use the trade mark on the goods or services covered by the registration. A defensive trade mark is therefore not vulnerable for removal from the Register on the basis of non-use.
Advantages of a defensive registration over rights at common law
The tort of passing off and the misleading and deceptive conduct provisions of the Trade Practices Act 1974 may provide a brand owner with relief if it can be established that a reputation in the trade mark has been built up in Australia and that consumer deception will result from third party misuse of the trade mark. However, a defensive trade mark registration may provide a more convenient avenue and cheaper access to relief from misuse of a trade mark than the alternative remedies.
If you are interested in filing an application for a defensive trade mark registration, or have any queries in relation to this article, please contact us to discuss.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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