Defensive trade mark registrations allow owners of well known marks to register their marks for goods and services that extend beyond the goods/services that they provide. The owner does not have to have a bona fide intention to use the mark for those goods/services covered, and the registration does not become vulnerable to removal for non-use if the owner does not use the mark for those goods/services. To secure a defensive trade mark, the owner must provide evidence to show that the trade mark has been used to such an extent that use of the trade mark on different goods/services would lead to the assumption the different goods/services were connected to the owner.
Section 120(3) provides that a registered trade mark is infringed where a substantially identical or deceptively similar trade mark is used for unrelated goods or services, if the registered trade mark is well known.
Why would trade mark owners go to the trouble of proactively evidencing their mark is well known to obtain a defensive trade mark registration, when in effect they can just rely on s120(3) and only adduce the evidence if/when needed?
Defensive trade marks were introduced in 1955, whereas s120(3) were introduced in 1995. Of the 500 pending and registered defensive trade marks in Australia, 168 predate the 17 October 1995 commencement date of the new Act, meaning 332 post date it. As more have been filed after, it seems at first pass that the new s120(3) doesn’t seem to have slowed down the use of defensive trade marks. But, then compare the total number of pending and registered trade marks from before (53,888) and after (982,550) the introduction of the new Act and that reveals that the percentage increase in defensive marks (198%) pales in comparison to the percentage increase in total marks (1823%).
So, many entities do seem to be relying on s120(3). But, I gather for the few that still seek to register and maintain defensive trade marks, the benefit is that they can rely on take down notices as they can evidence registered rights, as opposed to having to resort to costly litigation where they must prove that they are well known and that their interests are likely to be adversely affected to get the conduct stopped.
Perhaps they could also argue that s120(3) extends on the scope of the defensive trade mark, although it is not clear whether there is any circumstance where a defensive trade mark would not be breached except by s120(3), or vice versa (that s120(3) would not apply but the defensive trade mark saves the day).
What is clear is that if you are considering using a well known trade mark for different goods/services, you should not just stop at considering whether the mark is registered as a defensive trade mark. You should also turn your mind to s120(3) and think carefully before you use the mark. If you are unsure and want some infringement advice, please reach out to Tarr Law.
