Having a strong and recognisable brand is important. Chances are, your business already has a registered trade mark over brand assets such as its logo and product names. But did you know you that certain businesses can register defensive trade marks for goods and services they don’t yet offer?
What is a defensive trade mark?
When completing a trade mark registration application, the application must identify which classes of goods and service you wish to register in relation to with appropriate descriptions. There are currently 45 different classes.
A standard trade mark registration is where your business registers a trade mark in relation to the classes of goods and services that your business provides.
A defensive trade mark registration is a further registration you make after that initial registration, where your business registers a trade mark in relation to classes of goods and services that are not and may never be provided by the business. The purpose of this registration is to defend against the general public assuming that an unrelated entity’s products and services are linked to your business.
Can anyone register a defensive trade mark?
No. A business can only register a defensive trade mark in circumstances where the general public is so familiar with the trade mark that any use would likely cause the public to assume that the other product and service is owned by that business. Your business must establish a number of matters to the trade mark examiner’s satisfaction, including that:
Your business owns a registered trade mark for certain goods and services.
The public awareness and reputation of that trade mark is such that, if an unrelated entity was to start using it in branding for goods and services in other classes, the general public would likely assume that it was your business expanding into that area of the market.
Should I register a defensive trade mark?
There are many potential benefits to registering a defensive trade mark, including the following:
More extensive protections. Because the scope of a defensive trade mark is not limited only to the goods and services that your business provides, it offers much broader protections for your brand by preventing the public from associating your brand with other types of goods and services.
Prevent brand and reputation damage. Defensive trade marks can be particularly useful to prevent your brand from being falsely associated with goods and services that are inconsistent with your brand. For example, a health and wellness brand might wish to register a defensive trade mark in relation to alcoholic beverages.
Avoid removal of your trade mark. Unlike for standard trade mark registration, there is no requirement that you must prove actual use the trade mark for the goods or services covered by that registration. Accordingly, a defensive trade mark is not vulnerable to removal of registration on the basis of non-use.
Prevent third party registrations. Without a defensive trade mark, your brand will be vulnerable to other third parties applying to register a similar trade mark for other types of goods and services. Not only can this have consequences to the reputation of your brand, there are also significant expenses associated with opposing a third parties trade mark registration.
Avoid litigation. Legal disputes are extremely expensive, time consuming, and are a major distraction from your business. A defensive trade mark may assist to avoid litigation and can provide a more efficient and cost-effective means for relief than litigation on grounds of other infringement actions, such as the tort of passing off or misleading and deceptive conduct under the Australian Consumer Law.
Key takeaways
Defensive trade mark registrations can be an important and effective strategy to protect the goodwill and reputation established in your business trade marks. If you would like to find out more about how defensive trademarks can benefit and protect your brand, or if you need assistance in registering your defensive trademark, call us on 02 9199 4563.
This blog post does not constitute legal advice and should not be relied upon as such. It is a general commentary on matters that may be of interest to you. Formal legal or other professional advice should be sought before acting or relying on any matter arising from this communication.