Protecting Well-Known Trademarks: Usefulness of Defensive Trademark Filings

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

A defensive trademark registration (defensive registration) is provided for in Part 17 of the Trade Marks Act 1995 (Cth). It is available for ‘well-known’ or ‘famous’ brands in Australia and offers a wide scope of protection. Examples of Australian trademarks protected by defensive registration include Kellogg’s, Billabong, the Wiggles and Vegemite. Unlike ordinary marks, defensive marks can be registered without any intention of 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, but the registration will never become vulnerable to cancellation for non-use.

The political rationale for defensive registrations is to provide broader protection and prevent deception and confusion in the marketplace. The advantage of defensive registrations over an action for fraudulent marketing or contravention of Australian Consumer Lawdoes no real deception need to be proven and all the surrounding circumstances are irrelevant?

The notion of a reputation spilling over into unrelated goods or services is not recent, having its roots in the common law action of ‘to pass’. As early as 1898, the KODAK photography company sued for imitation against the use of the KODAK mark by a bicycle company. Despite the fact that there is little correlation between cameras and bicycles, the British court prohibited the bicycle company from using the word KODAK because the well-known reputation of the photography company was likely to lead people to think there was an association between her and bikes. .

A defensive registration has obvious advantages when a company is considering its brand protection strategy. Otherwise, defensive registrations are like ordinary marks, namely:

  • third parties can be sued for violation of defensive registration;
  • defensive recording may be licensed to third parties; and
  • the Australian Trade Marks Office will cite the defensive registration as an objection against subsequent applications by third parties to register the same mark or a similar mark for the same or similar goods and/or services (to those specified in the registration defensive).

Defensive trademark registrations are therefore a useful tool to help a company enforce its rights against merchants who misuse well-known trademarks in areas or in contexts that are not related to the main offer of the company. . Defensive marks are also very useful 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 PROTOX mark. Allergan’s standard trademarks for the same word have been partially removed for non-use and have not been found to be infringing. We have reported in more detail on the Full Court’s decision here.

Obtaining defensive inscriptions

Given the strong rights afforded by defensive registrations, IP Australia does not readily grant defensive registrations. To benefit from 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 connection with the wider goods/services specified in the defensive claim would likely be considered to indicate a connection with the claimant.

The Registrar of Trademarks (the Registrar) has a duty to protect the public, especially competing traders, from the effects of an overbroad defensive registration. However, the notoriety of a mark may outweigh this imperative when a “probable connection” with the well-known owner of the mark is established. In AT&T Corp Application [2001] ATMO 96, the Registrar decided to grant broad defensive registration of the AT&T mark because the commercial and cultural impact of the Petitioner’s activities extended far beyond its immediate area of ​​commercial interest.

Moreover, in Pfizer Products Inc. (2004) 61 PR 165, the Registrar was satisfied that the “increasing awareness” of the VIAGRA mark meant that a connection could be inferred for a wider group of goods than previously contemplated. The fact that the mark was a completely invented word and the extent of the usage also supported the conclusion that another trader was unlikely to have a legitimate need to use the word VIAGRA as a mark.

The procedure for filing a defensive mark application is the same as for a “standard” mark. The defensive claim is considered within three months, and the claimant then has 15 months to prepare evidence to convince IP Australia to grant the defensive registration. Typically, supporting evidence would consist of a primary statement made by an officer of the company setting out the usual information about the use and reputation of the mark, such as usage history, sales and examples of promotional and marketing materials.

The registrant should state why, in their view, potential consumers are likely to infer a connection to the applicant company when the mark is used on the wider goods and/or services specified in the defensive application. If the examiner is not convinced by the evidence contained in the main statement, he may request additional supporting information, for example from persons independent of the sector.

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

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

The examiner may also raise earlier similar marks as objections. These objections will need to be overcome either by arguments or by removing the conflicting goods/services from the application.

The small number of defensive marks currently registered in Australia (319 at the time of publication, or approximately 0.04% of total registered marks) indicates that this system remains underutilized, particularly by Australian marks. The following are examples of defensive marks accepted for registration in recent years:

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

Final remarks

Well-known companies should consider defensive trademark registration as part of their intellectual property protection strategy. A defensive mark is a powerful asset, especially given the attack possibilities against standard mark registrations. Standard marks may be deleted from the register or products/services may be restricted in non-use actions. As the recent BOTOX v. PROTOX decision mentioned above shows, a defensive mark can be a useful mechanism to protect major trademark owners. These registrations provide readily available and less expensive access to counterfeit repair compared to standard marks. Although significant evidence of the reputation of the mark and the “probable connection” with the goods / services offered are necessary to obtain a defensive registration, it is well worth the wide scope of protection offered.

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