Can I apply for a defensive trade mark?

Oct 11, 2023

Australia’s trade mark legislation provides trade mark owners with the ability to register (in certain circumstances) their well-known brands as ‘defensive trade marks’ in respect of particular goods and/or services, even if the owner of the mark has no intention of using the mark in respect of those goods and/or services.

This unique feature of Australian trade mark law is not available in many other jurisdictions around the world.

Generally, a person may apply to register a trade mark in respect of goods and/or services in Australia provided that (among other things) that person claims to be the owner of the trade mark and:

  • the person is using or intends to use the trade mark in relation to the goods and/or services;
  • the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services; or
  • the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Further, owners of registered trade marks may be at risk of another trader lodging a cancellation application against their trade mark for non-use, and having their trade mark removed from the register (in full or in part), if the trade mark has remained registered for a continuous period of three years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

  • used the trade mark in Australia; or
  • used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

A non-use application may also be made (and the trade mark will be removed from the register) if on the day on which the application for the registration of the trade mark was filed, the owner of the trade mark had no intention to use the trade mark and the owner has not used the mark in good faith in Australia.

However, a defensive trade mark registration:

  • can prevent the registration of similar trade marks in classes that the owner of the defensive trade mark does not trade in; and
  • is not subject to removal for non-use.

Because defensive trade marks offer such strong protection, they are not easy to obtain in our jurisdiction.  The circumstances under which an application for a defensive trade mark may be made are as follows:

  • the trade mark must, at the time the application for a defensive registration is filed, already be registered in the name of the applicant and well known in Australia; and
  • the trade mark must have been used to such an extent, in relation to all or any of the goods or services in respect of which it is registered, that its use on the goods or services sought by the defensive registration would be likely to be taken by consumers as indicating a connection between those goods or services and the owner of the registered trade mark.

It is important to note that provided that the above criteria is met, defensive trade marks can be registered even if the applicant does not have any intention to use the mark in respect of the goods or services specified in their application.

Some examples of brands that are protected by a defensive trade mark registration in Australia are Chanel, Levi’s and Coca-Cola.

The owners of well-known marks trading in Australia should consider whether they are eligible to register a defensive trade mark in order to access broad protection for their valuable brands.