Protecting well-known brands: utility of defensive trade mark registrations

• Published date: 21 October 2021
• Law Firm: Corrs Chambers Westgarth
• Author: Mr Jurgen Bebber, Sarah Catania and Chris Sgourakis

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

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

The policy rationale of defensive registrations is to provide broader protection and prevent deception and confusion in the marketplace. The advantage of defensive registrations, over an action for passing off or contravention of the Australian Consumer Law, is that no actual deception needs to be proved, and any surrounding circumstances are not relevant - the question for infringement of a defensive registration is simply: "has the defendant used the same or similar mark for the same or similar goods?"

The notion of a reputation spilling over into unrelated goods or services is not a recent one, with roots in the common law action of 'passing off'. As far back as 1898, the photography company KODAK commenced proceedings for passing off against a bicycle company's use of the KODAK trade mark.[1] Despite the fact that there is little correlation between cameras and bicycles, the UK Court restrained the bicycle company from using the word KODAK as the photography company's well-known...