Defence is the best attack

Every country’s trademark law has its own quirks, which may be manipulated to a trademark owner’s advantage.

Defensive trademark registrations remain available in Australia. This little known permutation of the standard trademark is exceptionally valuable for two reasons – strengthening portfolios and saving money.

What are defensive trademark registrations?

There is a difference between registering a standard trademark as a defence (a concept easily grasped by trademark specialists anywhere in the world) and a defensive trademark registration.

Registering a trademark defensively means that a standard trademark is registered with a view to preventing third parties from registering and, ideally, using the trademark in question (or something similar) in respect to goods and/or services not provided by the true trademark owner. Therefore, the hope of registering a trademark defensively will “secure” all aspects of the trademark and guard against the loss of prestige that may arise if a third party uses the same or similar trademark without authority from the true trademark owner.

There are difficulties associated with using a standard registration defensively.

Registration of the trademark may be opposed because the true trademark owner does not intend to use the trademark, and if the trademark is registered, it may become subject to removal proceedings. Removal proceedings are available if the trademark has been on the Australian Trade Marks Register for five years, and unused for a period of three years.

Conversely, an Australian defensive trademark registration neatly avoids these problems. But, as nothing comes easily in the trademark world, there are hoops to jump through. To secure an Australian defensive trademark registration, the trademark owner must base their application on an existing and identical distinctive trademark registered in the owner’s name.

The defensive trademark owner must show that the goods and/or services of the defensive trademark 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 trademark registration for luggage by referring to the product range of other high-end watch and fashion brands.

Once the application for a defensive trademark is accepted for registration, any opposition asserting the trademark owner does not intend to use the trademark is off the table, as is the possibility that the trademark will be removed on the grounds of non-use at some future stage.

It is imperative to keep a defensive trademark 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 trademark is a mere fraction of what will be incurred if it proves necessary to oppose a third party’s registration of your client’s trademark (or something similar).

Defensive trademark 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 trademark 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 trademark 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 trademark 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 trademark registrations – and we think silence is golden. If you would like to know more about defensive trademarks, please contact our Head of Trademarks, Geraldine Rimmer.

Geraldine has experience securing defensive trademark 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 trademark registrations.