This is the first of a series of articles regarding less utilised trade mark applications which may be beneficial in providing additional protection to your brand or a new and efficient avenue of protection not previously considered. Defensive, series, and collective trade marks are not common trade mark applications but provide unique and strategic protection which may supplement existing protection and/or provide additional protection. As seen below, of the 854,090 registered marks in Australia, only 347 are defensive marks. In the first of three articles we look at defensive trade mark applications, when they are useful and how they work.
What is a Defensive trade mark?
A defensive trade mark is a strategic filing which anticipates goods/services which, if a similar mark were allowed to be registered, would likely be taken by consumers as indicating a connection between those goods/services of the owner of another registered mark. Section 185 of the (Australian) Trade Marks Act 1995 (Cth) provides the following definition of a defensive trade mark:
If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.[1]
This definition expressly contradicts the use principle underpinning a registered trade mark. Importantly, defensive trade marks are exempt from the use requirements which underpin a standard trade mark application/registration.[2] Accordingly, contrary to standard trade mark registrations, a defensive trade mark registration is not directly subject to attack by another party by an action for removal for non-use.
Requirements for a Defensive trade mark in Australia?
As mentioned above, while the use requirement is not a requirement for a defensive trade mark registration, the trade mark must already be registered in the name of the applicant for the goods which the applicant does use. The applicant is not required to have an intention to use the mark in relation to the goods/services designated by the defensive trade mark application.
While the filing process is much the same as a standard trade mark application, a defensive trade mark application must also be accompanied by (1) the registration number upon which the defensive trade mark is based and (2) evidence in support of the application. Notably, the evidence of use must support a finding that the registered mark which the defensive mark is based on has been used in relation to the designated goods/services to such an extent that its use on goods/services designated under the defensive trade mark application would be likely to be taken by consumers as indicating a connection between those goods/services and the owner of the registered mark. Like all evidence of use, there is no prescription for what constitutes sufficient evidence of use to support a defensive trade mark. As such, the more evidence of use accompanying an application for a defensive trade mark, the more likely it is to satisfy an examiner that the mark has been used to such an extent.
Why have a defensive trade mark?
Once registered, a defensive trade mark is treated like any other trade mark registration. Accordingly, if another trader uses a mark which is substantially identical or deceptively similar to your defensive trade mark in relation to goods/services designated under the registered defensive mark, you may seek relief under the Trade Marks Act 1995 (Cth).[3] Your defensive mark may also be cited against future applications and serve as the basis for an opposition to the registration of a trade mark should an examiner accept a mark which you consider to be too similar.
In light of the above, you may extend protection to goods/services which you have no intention of using but would still pose problems if another trader were to use a substantially identical or deceptively similar mark for those goods/services. Furthermore, given that there is no use required, the most direct way of attacking a defensive trade mark registration is to attack the trade mark registration which it is based upon. Provided you are using the mark for the designated goods under the standard trade mark registration, an attacker is unlikely to be successful in removing your trade mark registration or your defensive trade mark registration.
Case Study
In 2001, Pfizer sought registration of the trade mark ‘VIAGRA’ as a defensive trade mark in ten classes.[4] During examination, the examiner rejected the mark on the basis that it was not shown that the public were likely to draw a connection between the applicant and the use of the mark in relation to goods/services designated by the defensive trade mark.
The application as originally filed claimed priority from an application which Pfizer ultimately waived any claim to. As a result, the priority date of the relevant defensive trade mark application had been pushed forward approximately three years. Pfizer was then able to submit evidence of use for the three years between the earlier priority date and the new priority date.
The Hearing Officer accepted the ‘deepening fame’ of the mark during this additional three-year period meaning it was more likely for the public to infer a connection with a wider group of good/services. The Hearing officer further considered that ‘VIAGRA’ is a completely invented word, the extent of use and accompanying reputation, along with the likelihood of another trade needing to make legitimate use as a trade mark before concluding that the application should be accepted.[5]
From this example, it is clear that the evidence of use required to support the registration of a defensive mark is substantial. However, it should also be understood that there are no identical cases, and each instance must be considered on a case-by-case basis on its own merits.
Conclusion
While defensive trade marks have additional requirements to be registered, they also remove any obligation to use the mark in relation to its designated goods/services after registration. The benefits provided by a defensive mark can help safeguard your brand for years to come. If you are interested in a defensive trade mark or unsure whether one is right for you or your business, contact a Trade Marks Attorney at Michael Buck IP for advice, preparation and filing of your trade mark application.
[1] Trade Marks Act 1995 (Cth) s 185(1).
[2] Trade Marks Act 1995 (Cth) s 185(2).
[3] Trade Marks Act 1995 (Cth) s 20(2).
[4] Australian Trade Mark Registration No. 894613.
[5] Re Pfizer Products Inc (2004) 61 IPR 165.