If you have a trade mark registration which has been used on the
goods and/or services covered by the registration to such an extent
that you consider that any unauthorised use of the trade mark for
other goods or services would suggest a connection between you and
those other goods or services, then you may wish to consider filing
a trade mark application for a defensive trade mark.
Purpose of defensive registration
The purpose of defensive trade mark registration is to:
Provide owners of trade marks which have been extensively used
in Australia with protection against the misuse of the trade mark
in a manner which might diminish the value or reputation in that
trade mark; and
To protect consumers from confusion and deception which might
result from a third party appropriating a trade mark which has been
extensively used in Australia.
Rights obtained as a result of a defensive registration
The owner of a defensive trade mark registration has the right
to obtain relief under the Trade Marks Act 1995 if the trade mark
has been infringed.
In contrast to a standard trade mark registration, there is no
requirement for the owner of a defensive registration to use the
trade mark on the goods or services covered by the registration. A
defensive trade mark is therefore not vulnerable for removal from
the Register on the basis of non-use.
Advantages of a defensive registration over rights at common
The tort of passing off and the misleading and deceptive conduct
provisions of the Trade Practices Act 1974 may provide a brand
owner with relief if it can be established that a reputation in the
trade mark has been built up in Australia and that consumer
deception will result from third party misuse of the trade mark.
However, a defensive trade mark registration may provide a more
convenient avenue and cheaper access to relief from misuse of a
trade mark than the alternative remedies.
If you are interested in filing an application for a defensive
trade mark registration, or have any queries in relation to this
article, please contact us to discuss.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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