Protecting well-known brands: utility of defensive trade mark registrations - Trademark

One feature of Australian trade mark law that is not available in many other jurisdictions is the ability to register a defensive trade mark.

A defensive trade mark registration (defensive registration) is provided for in Part 17 of the Trade Marks Act 1995 (Cth). It is available for 'well-known' or 'famous' trade marks in Australia and it offers a wide scope of protection. Examples of Australian brands that are protected by a defensive registration include Kellogg's, Billabong, the Wiggles and Vegemite. Unlike ordinary trade marks, defensive trade marks can be registered without any intention by the applicant to use the mark for the goods or services specified in the application. The applicant may, in fact, never use the mark for the goods or services specified, yet the registration will never become vulnerable to cancellation for non-use.

The policy rationale of defensive registrations is to provide broader protection and prevent deception and confusion in the marketplace. The advantage of defensive registrations, over an action for passing off or contravention of the Australian Consumer Law, is that no actual deception needs to be proved, and any surrounding circumstances are not relevant - the question for infringement of a defensive registration is simply: "has the defendant used the same or similar mark for the same or similar goods?"

The notion of a reputation spilling over into unrelated goods or services is not a recent one, with roots in the common law action of 'passing off'. As far back as 1898, the photography company KODAK commenced proceedings for passing off against a bicycle company's use of the KODAK trade mark.[1] Despite the fact that there is little correlation between cameras and bicycles, the UK Court restrained the bicycle company from using the word KODAK as the photography company's well-known reputation was likely to lead people to think that there was an association between it and the bicycles.

There are clear benefits to a defensive registration when a company is considering its brand protection strategy. Otherwise, defensive registrations are like ordinary trade marks, namely:

third parties can be sued for infringement of the defensive registration;
the defensive registration can be licensed to third parties; and
the Australian Trade Marks Office will cite the defensive registration as an objection against third parties' later applications to register the same or similar mark for the same or similar goods and/or services (to those specified in the defensive registration).

Defensive trade mark registrations are therefore a helpful tool to assist a company to enforce its rights against traders who misuse well-known marks in fields or in contexts which are unrelated to the company's core offering. Defensive trade marks also greatly assist in oppositions against applications for the same or similar marks for unrelated goods or services.

Recently, Allergan's defensive mark for BOTOX was found to have been infringed by another party's use of the trade mark PROTOX. Allergan's standard trade marks for the same word were partially removed for non-use and were not found to be infringed.[2] We have reported on the Full Court decision in more detail here.

Obtaining defensive registrations

Given the strong rights which defensive registrations bestow, IP Australia does not grant defensive registrations easily. To qualify for such broad protection, it must be established that a mark:

is well-known or famous in Australia; and
has been used to such an extent on the previously registered goods that its use in relation to the broader goods/services specified in the defensive application would be likely to be taken as indicating a connection with the applicant.

The Registrar of Trade Marks (the Registrar) has a duty to protect the public, particularly competing traders, from the effects of an excessively broad defensive registration. However, the notoriety of a mark may override that imperative where a "likely connection" with the well-known brand owner is established. In AT&T Corp's Application [2001] ATMO 96, the Registrar decided to grant a broad defensive registration for the mark AT&T, as the commercial and cultural impact of the applicant's activities extended far beyond its immediate field of commercial interest.

Furthermore, in Re Pfizer Products Inc (2004) 61 PR 165, the Registrar was satisfied that the "deepening fame" of the VIAGRA trade mark meant that a connection could be inferred for a wider group of goods than previously considered. The fact that the mark was a completely invented word and the extent of use also supported the conclusion that it was unlikely that another trader would have any legitimate need to use the word VIAGRA as a trade mark.

The procedure for filing a defensive trade mark application is the same as for a "standard" trade mark. The defensive application is examined within three months, and the applicant would then have 15 months to prepare its evidence to convince IP Australia to grant the defensive registration. Typically, evidence in support would consist of a principal declaration made by an officer of the company setting out the usual information on use and reputation of the mark, such as history of use, sales and examples of promotional and marketing materials.

The declarant would need to state why, in their opinion, potential consumers are likely to infer a connection with the applicant company when the mark is used on the broader goods and/or services specified in the defensive application. If the examiner were not to be convinced by the evidence in the principal declaration, they may request further supporting information, for example from independent persons in the trade.

The examiner is required to consider the following factors when examining evidence:

The distinctiveness of the mark (or lack thereof);
whether, and how many, other traders own existing registrations for the same mark for the same or similar goods / services;
how well known the mark is; and
what general relationships or associations do the specified goods / services have with what the mark is usually well known for.

The examiner may also raise prior similar marks as objections. Such objections will need to be overcome either by argument or by deletion of the conflicting goods/services from the application.

The small number of currently registered defensive trade marks in Australia (319 as at the date of publication, around 0.04% of total registered marks) indicate that this system remains underutilised, particularly by Australian brands. Examples of defensive marks accepted for registration over the past few years include:

CHANEL in the name of Chanel Limited
No. 5 in the name of Chanel Limited
PETER LEHMANN in the name of Peter Lehmann Wines Pty Limited
seconds count, not second chances in the names of Ian French and Denise Dagley
PLUMM in the name of Joval Pty Ltd as trustee for Joval Brands Trust
BEROCCA in the name of Bayer Consumer Care AG
JAGUAR in the name of Jaguar Land Rover Limited
RANGE ROVER in the name of Jaguar Land Rover Limited
LAND ROVER in the name of Jaguar Land Rover Limited
ACCENTURE in the name of Accenture Global Services Limited
CPA in the name of CPA Australia Limited

Concluding remarks

Well-known businesses should consider a defensive trade mark registration as part of their IP protection strategy. A defensive trade mark is a powerful asset particularly given the avenues of attack against standard trade mark registrations. Standard trade marks can be removed from the Register or the goods / services can be limited in non-use actions. As shown in the recent BOTOX v PROTOX decision mentioned above, a defensive trade mark can provide a useful mechanism to protect major brand owners. These registrations provide readily available and cheaper access to relief from infringement compared to standard marks. Although significant evidence of the reputation of the mark and the "likely connection" with the proposed goods / services is required to obtain a defensive registration, it is well worth the broad scope of protection offered.

Footnotes

¹ Eastman Photographic Material Co Ltd v Griffiths Cycle Corp Ltd (1898) 15 RPC 105.

² Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163.

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.