Can’t Touch This: Defensive Trade Marks

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• The Threshold Requirement of Registrability
• A Necessary “Connection”
• Rejecting a Defensive Trade Mark Application

Section 17 of the Trade Marks Act 1995 (Cth) (the ‘Act’) broadly defines what a trade mark is, and allows registration of words, shapes, sounds, smells, colours and, of course, composite marks.

Although you can trade mark almost anything, registering a trade mark does not give you an unlimited right to prevent others from using a mark similar, or even identical to yours. A trade mark owner only receives protection in respect of the goods and services claimed in their application.

There may come a time, however, when the public is so familiar with a mark that any use can give rise to an inference that all products bearing the trade mark come from the same trade source. When this occurs, it’s time to start thinking about applying for a defensive trade mark.

The Threshold Requirement of Registrability

In short, a defensive trade mark application is an extension of or an upgrade to an existing registration. Before you can obtain it, you must establish that:

1. The defensive trade mark is already registered in your name; and
2. The registered trade mark has been used to such an extent that its use in relation to unconnected goods and services would indicate to consumers that there is a connection.

Importantly you do not need to show that you intend to use the mark in respect of the goods and services you specify in your defensive trade mark application. Use is a not a pre-requisite to register defensive trade marks.

A Necessary “Connection”

Registering a defensive trade mark depends on whether you can show that consumers would be confused and suspect a link to your trading activities if IP Australia registered other similar marks to unrelated goods and services.

The alleged connection does not need to convey that the goods and services originate from the same source in the sense of being manufactured, marketed or provided by a single place. It is sufficient if an implication arises suggesting that you have licensed the goods and services to another, or that the proprietor authorises their use.

In determining whether such a connection exists, the following are relevant considerations:

1. The nature of the trade mark;
2. The existence of identical or similar trade marks registered after the original application but before the defensive trade mark application;
3. The reputation of the mark;
4. The classes of goods and services claimed under the defensive trade mark application and whether they are similar to the goods and services claimed under the original application; and
5. The evidence filed in support.

Rejecting a Defensive Trade Mark Application

IP Australia can refuse a defensive trade mark application on the basis that the mark:

1. Contains a prohibited sign;
2. Cannot be represented graphically;
3. Is scandalous or contains matter that is contrary to law;
4. Is likely to deceive or cause confusion;
5. Is identical to or deceptively similar to a later registered mark;
6. Isn’t registered in the name of the applicant; and
7. Doesn’t demonstrate that use of identical or similar marks in relation to unrelated goods and services would give rise to a presumption that there is a connection between the goods and services or the registered proprietors of the mark.

Questions? Get in touch with LegalVision’s trade mark lawyers on 1300 544 755.