Defensive Trade Marks

A defensive trade mark is a special type of registration that allows a trade mark owner to protect their mark across a wide range of goods and services, even if they don’t actually use the mark on those goods or services. Unlike standard trade marks, which require intention to use, defensive marks are based on reputation, not use.

These are particularly useful for iconic brands. Think of names like “Qantas,” “Vegemite,” or “Commonwealth Bank”, if someone were to use these marks on t-shirts, perfumes, or toys, most consumers would assume a connection with the well-known business behind them. Defensive trade marks allow brand owners to prevent such unauthorized uses without needing to prove actual use in those new categories.

Key Requirements for application

Before you can apply a defensive trade mark, there are a few essential boxes to tick. According to section 185 of the Trade Marks Act 1995, an application can be made only when-

• The trade mark is already registered in your name in Australia.
• The mark has been used so extensively, and is so well-known in its registered class, that consumers would assume a connection with your brand even if it appeared on different goods or services.
• You don’t need to show that you intend to use the mark in those additional categories.
• Defensive marks can be filed for classes already covered by the original registration or for completely unrelated classes.

In short, you must demonstrate that your brand is so strong that consumers would naturally associate it with your business, no matter where it appears.

Filing a Defensive Trade Mark: Procedure & Evidence

While the application process is similar to a standard trade mark filing, there are two key additional requirements-

• The application must reference the registration number of the existing trade mark forming the basis for the defensive application.
• The applicant must submit evidence in accordance with regulation 17.1, either at the time of filing or as soon as practicable thereafter.

The evidence should demonstrate the extent of use, consumer recognition, marketing activities, and overall public association between the mark and the applicant. Without this evidence, the application cannot proceed to substantive examination.

Examination of Defensive Applications

The Registrar must accept a defensive application unless there are specific grounds for rejection under section 33 of the Act. Defensive marks are not subject to section 41, which assesses distinctiveness, since the base mark is already registered. However, they are still examined under sections 39, 40, 42, 43, and 44.

The mark may have a different connotation in the new class, i.e. care is required to ensure it won’t cause confusion. Substantially identical or deceptively similar marks already on the Register may be cited against a defensive mark. Conversely, a defensive registration may also bar later applications for similar marks.

If the Registrar finds that the evidence doesn’t support the claimed connection under section 187(d), the application must be refused.

Grounds for Rejection

Trade Marks act 1995 under section 187 provides specific rejection grounds-

• The trade mark is not registered in the name of the applicant.
• The trade mark’s use in connection with the new goods/services would not be likely to indicate a connection with the applicant, despite its existing reputation.

The standard for assessing this “connection” draws heavily from the reasoning in Ferodo Ltd’s Application (1945) and subsequent decisions like Mobil Oil Corporation (1995), where courts and registrars focused on the breadth of the mark’s use, the distinctiveness of the mark, and the nature of the goods or services.

Key Factors Considered in Granting Defensive Registration

To determine whether a defensive registration is justified, the Registrar considers:

• Nature of the Trade Mark

Highly distinctive or invented marks (e.g., coined words) are more likely to be associated with the applicant across unrelated product lines.

• Extent of Use and Reputation

The broader and deeper the use—measured by sales, advertising, and public recognition—the stronger the case for defensive registration.

III. Other Registrations

If the same or similar mark is registered by third parties, this may weaken the assumed exclusivity and likelihood of a connection.

• Nature of Goods/Services in Defensive Application

Marks used on mass-market goods may support defensive registration across diverse classes. If the new classes are too remote, the likelihood of confusion diminishes unless supported by exceptional use or reputation.

• Brand Extension Practices

Where brand extension is common in the relevant industry, a case for consumer assumption of connection is easier to establish.

• Evidence from the Trade

While declarations from industry professionals can help, generic or formulaic statements carry less weight. The Registrar expects detailed, specific, and substantiated submissions.

Implications and Enforcement

Once registered, defensive marks are not vulnerable to removal for non-use under section 92(4)(b). This makes them an enduring shield against infringers, counterfeiters, and brand squatters.

Moreover, they broaden the scope of infringement actions. Under section 120, use of a substantially identical or deceptively similar mark in respect of goods covered by a defensive registration is prima facie infringement, even without actual trade by the applicant in that class.

Thus, defensive trade marks serve as a vital weapon in the arsenal of brand owners with significant reputation and reach. In Australia, they offer an elegant solution to prevent dilution and reinforce brand strength across unchartered product categories.

While the evidentiary burden is higher than for standard applications, the strategic advantage is substantial, i.e. especially in today’s era of rapid diversification and brand monetization.