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If you own a well known trade mark that has been used extensively in a particular category or categories of goods or classes, and it is likely that the use of the same trade mark in another category would make customers believe there is a connection, then you may wish to register a defensive trade mark.
| Example A popular and distinctive luxury grocery brand named ‘June Friar’ falls under several ‘Goods’ Classes (the IP Australia name for categories) such as class 17, 21, 29 30, 31 and 32. June Friar sells fresh produce, stationary, toiletries, as well as dried packaged foods and more. June Friar does not provide any sort of service. This grocery brand is very well known across Australia, having been established in the 1960s and has chains in every state and territory. A dog washing company also want to trade mark their company as ‘June Friar’ though it has nothing to do with the grocery store. The dog washing company would come under the service class 44, a class the grocery store has nothing in common with. Ordinarily, as the two are different classes, it is possible for the two companies to use these trade marks for different classes or categories without too much confusion. However, the grocery store June Friar who have established a huge reputation in Australia have thought ahead for these scenarios, and believe that anyone seeing any other company, even a dog washing company with the same name would think this is a new service being provided by the grocery store, or is somehow connected with the grocery store, rather than realising they are completely separate. As a result, June Friar have registered a ‘defensive trade mark’ in the same class as dog washing to prevent this exact scenario happening. Though the grocery store June Friar have no intention of ever running a dog washing service for example, this will prevent any other goods or service provider using the same name and thus confusing customers. |
The key here is defensive trade marks can be used to prevent customers seeing a link between two companies which have no connection.
Say things change, and years later the grocery company decide to run a dog washing company. They have already registered a defensive trade mark in this class. That’s ok, they can still register a normal new trade mark in this class!
Why Register A Defensive Trade Mark?
Registering a defensive trade mark can protect your brand’s reputation, so it is not accidentally associated with another business.
Another important reason to register defensive trade marks is to prevent the general public from being misled or confused.
Why Register A Normal Trade Mark?
Trade marks that are not defensive can be lodged by anyone, even if your business is brand new and has not yet established a reputation.
The most obvious benefit of registering a trade mark is to protect your brand’s reputation and as a general form of intellectual property protection.
Through registering a trade mark, you’re also creating an asset with its own rights. If you want to expand your business into other countries, registering a trade mark in Australia is also a necessary first step before you can register your trade mark overseas.
Can Anyone Use A Defensive Trade Mark?
Defensive trade marks are designed to be used by very well known brands that have already registered distinctive trade marks. These brands should have trade marks that have already been extensively used.
So if you’re a small business starting out, you don’t need to worry about defensive trade marks just yet!
What’s The Difference Between A Defensive Trade Mark And A Normal Trade Mark?
Trade marks ordinarily need to be used to be valid. If trade marks aren’t used, they can be challenged on the basis of non use.
Defensive trade marks however, don’t need to be used at all, and are designed to be a protective measure for your well established and well known trade mark.
The Takeaway
Applying for any type of trade mark can be a confusing, not to mention convoluted process! You can contact IP Australia directly if you would like to apply yourself, or if you would like a lawyer’s help anywhere along the process, whether guiding you through what class to register in, or actually applying on your behalf, you can contact Sprintlaw to speak with our Intellectual Property lawyers.
Get in touch at 1800 730 617 or via email at team@sprintlaw.com.au for a free, no-obligation chat.
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