Looking to proactively reduce the risk of someone adopting your brand in relation to goods and services that you don’t offer, but that would be connected with you? It might be worth considering a defensive trade mark registration to protect your interests in Australia.

At the time of writing this client alert, there are 113 pending defensive trade mark applications on the Australian Register of Trade Marks. The owners of these marks range from fashion brands, to banks, to energy drinks, to convenience stores. Clearly, these brand owners are taking advantage of the fact that defensive registrations are able to be secured in Australia (which is not the case in all other jurisdictions), adding these types of registrations to their growing stock of IP assets.

To secure a defensive trade mark registration in Australia, the owner must first already own a standard trade registration for the same mark. That mark must be used to such an extent for the registered goods and services, that use on other goods and services (those to be nominated under the defensive mark) would be likely considered by consumers to indicate a connection with the trade mark owner.

There are a range of benefits provided by a defensive trade mark. A defensive trade mark cannot be removed from the Register on the basis of non-use. It can be used as a sword, so to speak, as a defensive mark can be used to allege infringement. A defensive mark will also block later-in-time marks, whether defensive or not, thereby offering deterrent value.

Further, a trade mark registered as a defensive mark for certain goods and services can also subsequently be registered as any other type of trade mark for the same goods and services, should you wish to expand.

Trade mark owners wishing to file a defensive trade mark should be prepared to provide evidence of the repute and fame of their mark, to show that use of the mark for the nominated defensive goods and services would be confusing to the public.

If you are the owner of a brand with a growing local reputation, it would certainly be worth considering whether you have a basis to obtain a defensive trade mark to add to your portfolio.

For any queries or a confidential discussion about the right strategy for you, please contact the Dentons Trademarks Team in Australia.