For most businesses, registering a trade mark is about claiming ownership over the brand elements they use every day, i.e. logos, names, slogans, and so on. But what happens when a brand becomes so well known that its use on completely different goods or services could still suggest a connection to the original owner?

That’s where defensive trade marks come in. This underused but powerful tool allows iconic brands to prevent others from exploiting their reputation, even in markets they don’t directly operate in.

What Is a Defensive Trade Mark?

A defensive trade mark is a type of registration that allows a brand owner to protect their trade mark in connection with goods or services they don’t actually sell, based purely on the strength of their reputation.

Introduced under the Trade Marks Act 1955, this concept was designed to help brand owners stop opportunistic third parties from using a famous trade mark on unrelated products in a way that could confuse consumers or dilute the brand’s power.

Today, under the Trade Marks Act 1995 (Cth), a defensive trade mark gives its owner broader legal protection. Unlike a standard trade mark:

  • You don’t have to prove use or intention to use the mark for the defensive goods/services.
  • The mark can’t be challenged for non-use.
  • You can bring infringement actions if someone else uses your mark—even in areas where you don’t actively trade.

When Can You Apply for a Defensive Trade Mark?

Defensive trade marks aren’t available to everyone. You must meet strict criteria under section 185 of the Trade Marks Act 1995. To be eligible-

  1. The trade mark must already be registered in your name.
  2. You must have used the mark so extensively (for some or all of the registered goods/services) that its use on other goods or services would be likely to suggest a connection to your business.
  3. You don’t need to intend to use the mark on the new goods or services listed in the defensive application.

So, if your brand has become so well-known that consumers would assume it’s you, i.e. even if it appears on totally unrelated goods, you may be able to register a defensive trade mark.

Imagine your business owns a wildly popular trade mark for technology products, say, a name like “Globo.” If you’ve been operating for decades and your brand is everywhere, consumers might reasonably believe that “Globo” branded shoes, furniture, or even breakfast cereals come from you, or are endorsed by you, i.e. even if you’ve never sold any of those things.

A defensive registration helps stop others from using your mark in this way, avoiding confusion and maintaining your control over the brand’s reach.

What Goods and Services Can Be Covered?

You can apply for defensive protection over any goods or services, not just those similar or related to what you already offer. That said, IP Australia will still examine whether consumers would realistically infer a connection. Factors considered include-

  • How distinctive is your mark?
  • The extent and duration of use
  • The range of goods/services your mark is already associated with
  • The reputation you’ve built in Australia (not just overseas spillover)
  • The closeness between your existing and proposed categories

The more distant the new goods or services are from your existing business, the stronger your evidence needs to be.

How Do You Apply?

The application process is similar to that for a standard trade mark but with some key additions-

You’ll need to:

  • Refer to the existing registration number that the defensive mark is based on
  • Provide evidence of extensive use and consumer recognition
  • File a statutory declaration outlining the mark’s reputation and why use on the new goods or services would imply a connection to you
  • Possibly submit market research or third-party declarations supporting your case

Your application is examined like a standard one, but sections 20(1), 27(1)(b), 41, 59, and 121 of the Act don’t apply to defensive marks. That means there’s no need to show intention to use or inherent distinctiveness.

Evidence: What Does IP Australia Expect?

To make a strong case, you should supply-

  • Clear timeline and geography of use for the existing trade mark
  • Advertising spend, channels used, and examples of promotional materials
  • Sales figures and market share data (if available)
  • Explanation of why consumers would associate the mark with you if it appeared on unrelated goods/services
  • If helpful, declarations from people in the relevant industry or a professionally conducted consumer survey

Keep in mind that evidence must go beyond general assertions. It needs to be precise, specific, and tied to the Australian market.

Substantive Examination

Even though section 41 (inherent distinctiveness) doesn’t apply, a defensive trade mark application can still be rejected under other grounds, i.e. especially section 187.

Rejection grounds include-

  • The trade mark is not already registered in your name
  • Consumers are not likely to assume a connection between the new goods/services and your business

This test is fact-driven. For example, in Re Mobil Oil Corporation [1995], Mobil successfully obtained defensive registration across unrelated goods. This was because the mark’s stylized form was well known, and the business had clearly diversified into various retail offerings. In contrast, in the UK Ferodo case, the court rejected defensive registration of a brake brand in connection with pharmaceuticals and tobacco, finding the goods too unrelated and the reputation too narrow.

Defensive Marks and Infringement

This is where defensive marks show their real value.

Under section 120 of the Act, a standard registered trade mark is infringed when someone uses a substantially identical or deceptively similar mark on:

  • The same goods/services, or
  • Goods/services of the same description or closely related

But for defensive trade marks, the bar is lower. Because you don’t need to be using the mark on those goods or services, any unauthorized use is considered infringement, i.e. as long as the mark is registered in that class.

This broader protection is crucial for famous marks that face misuse from copycats or opportunistic traders trying to ride on the brand’s reputation in unrelated categories.

Opposing a Defensive Trade Mark

Even though these marks are powerful, they aren’t bulletproof. A third party can oppose registration on most of the same grounds as a standard application (except section 41 or 59). And under section 187, they can argue that-

  • The applicant isn’t the owner of the original mark, or
  • Use of the mark on the new goods/services wouldn’t suggest a connection with the applicant

That said, successful opposition is rare unless the applicant’s evidence is particularly weak or speculative.

Should You File a Defensive Trade Mark?

You should consider filing if-

  • Your brand has significant recognition in Australia
  • You’re frequently dealing with unauthorized use or attempted free-riding
  • Your mark is being copied across unrelated industries
  • You want to expand into merchandising, sponsorship, or brand licensing
  • You’re not ready to trade in certain categories, but want to block others from beating you to it

Defensive marks are especially useful in retail, consumer goods, automotive, fashion, tech, and entertainment, i.e. industries where brand extension and licensing are common.

Final Thoughts

Defensive trade marks aren’t for everyone. But they do offer a unique way to lock down your brand’s reputation beyond its current reach. They remove the burden of use, offer broader infringement remedies, and help deter bad actors looking to capitalize on your hard-earned goodwill.

But like all strategic IP moves, they require careful planning and robust evidence. At our firm, we help clients assess whether a defensive mark is suitable, gather the right evidence, and guide the application through IP Australia’s scrutiny.

If your brand is widely recognized, talk to us. We can help you decide whether a defensive registration is the right next step to protect your name across industries, i.e. now and into the future.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

Trademarks