Every country’s trade mark law has its own quirks, which may be manipulated to a trade mark owner’s advantage.
Defensive trade mark registrations remain available in Australia. This little known permutation of the standard trade mark is exceptionally valuable for two reasons – strengthening portfolios and saving money.
What are defensive trade mark registrations?
There is a difference between registering a standard trade mark as a defence (a concept easily grasped by trade mark specialists anywhere in the world) and a defensive trade mark registration.
Registering a trade mark defensively means that a standard trade mark is registered with a view to preventing third parties from registering and, ideally, using the trade mark in question (or something similar) in respect to goods and/or services not provided by the true trade mark owner. Therefore, the hope of registering a trade mark defensively will “secure” all aspects of the trade mark and guard against the loss of prestige that may arise if a third party uses the same or similar trade mark without authority from the true trade mark owner.
There are difficulties associated with using a standard registration defensively.
Registration of the trade mark may be opposed because the true trade mark owner does not intend to use the trade mark, and if the trade mark is registered, it may become subject to removal proceedings. Removal proceedings are available if the trade mark has been on the Australian Trade Marks Register for five years, and unused for a period of three years.
Conversely, an Australian defensive trade mark registration neatly avoids these problems. But, as nothing comes easily in the trade mark world, there are hoops to jump through. To secure an Australian defensive trade mark registration, the trade mark owner must base their application on an existing and identical distinctive trade mark registered in the owner’s name.
The defensive trade mark owner must show that the goods and/or services of the defensive trade mark application could be viewed as being related or associated with the goods and/or services of the base registration. This is frequently carried out by providing evidence that illustrates the status of the marketplace. As an example, a prestige watch company should be able to secure a defensive trade mark registration for luggage by referring to the product range of other high-end watch and fashion brands.
Once the application for a defensive trade mark is accepted for registration, any opposition asserting the trade mark owner does not intend to use the trade mark is off the table, as is the possibility that the trade mark will be removed on the grounds of non-use at some future stage.
It is imperative to keep a defensive trade mark registration alive and ensure the base registration is kept alive. This means being particular about monitoring the renewal dates of the base registration.
How does hoop jumping save money?
The expense that may be incurred in securing acceptance and registration of a defensive trade mark is a mere fraction of what will be incurred if it proves necessary to oppose a third party’s registration of your client’s trade mark (or something similar).
Defensive trade mark registrations can reduce the need for ongoing monitoring of the status of the Australian Trade Marks Register, frequently the precursor to opposition proceedings. Frequent searches of the Australian Trade Mark Office allow Examiners to object to registration of a conflicting trade mark on the ground that it is too similar (defensive or otherwise). This process means (a) any monitoring of the Australian Trade Marks Register may be less extensive and more strategic and (b) the commencement of opposition proceedings may be avoided completely. These are key points that result in cost savings.
Do defensive trade mark registrations have a future in Australia?
The answer seems to be a resounding yes.
In the Intellectual Property Arrangements Draft Report, the Australian government’s 2016 Productivity Commission recommended that defensive trade mark registrations should be abolished. However, this recommendation only made it to the Commission’s draft report. The Productivity Commission invited interested parties to make submissions regarding the Report’s recommendations. The numerous submissions proved to be persuasive, and in the final Intellectual Property Arrangements Report, the Productivity Commission was silent on the issue of defensive trade mark registrations – and we think silence is golden. If you would like to know more about defensive trade marks, please contact our Head of Trademarks, Geraldine Rimmer.
Geraldine has experience securing defensive trade mark registrations, and, on behalf of the Queensland Law Society, made written and verbal submissions to the Productivity Commission successfully arguing against the abolition of defensive trade mark registrations.
