Section 187 of the Act sets out the additional grounds for rejecting an application for registration of a defensive trade mark. The application must be rejected under section 187 –

if the trade mark is not registered, or is not registered in the name of the applicant (paragraph 187(c)); or
in the case of a registered trade mark – if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner (paragraph 187(d)).

Under section 187 the criterion for acceptance of a defensive trade mark application is that the use of the trade mark in relation to the designated goods or services is likely to be taken as indicating a connection between those goods or services and the person who is the registered owner of the trade mark. According to subsection 185(1), the likelihood of this connection being made must be because of the extent to which the registered trade mark has been used on any or all of the goods or services for which it is registered. This precludes defensive registration purely on the basis of the reputation or renown of a trade mark unless it has been used in Australia. However, it does not preclude registration as a defensive mark where, as well as use in Australia, there has been an extensive spill-over of overseas reputation. (See Application by AT & T Corporation, [2001] ATMO 96.)

6.1 Practice under the Trade Marks Act 1955

There are no reported court decisions arising under Part XII of the Trade Marks Act 1955.

Early decisions of the (Australian) Registrar relied heavily on principles stated by Justice Evershed in Ferodo Ltd’s Application (1945) 62 RPC 111, particularly his view that the “connection in the course of trade” necessary for defensive registration was more readily demonstrated if the goods were of a similar nature to those on which the trade mark had already been used. This is reflected in Chicopee Manufacturing Corp.’s Appn (1962) 32 AOJP 489, and Bingo Pty Ltd's Appn (1962) 32 AOJP 775 (the Bingo case), where the Assistant Registrar was willing to allow a defensive registration but only in respect of goods related to the goods of the respective Part A registrations and which would be likely to “emanate from the registered proprietors”. This did not take account of the more liberal requirements under the Australian legislation for a “connection” rather than a “connection in the course of trade”. It should also be noted, however, that the kinds of “connections” (as opposed to trade connections) which consumers might make between goods and the owner of a trade mark were probably more restricted back then. Sponsorship and merchandising activities using trade marks are now more prevalent and consumers are now more likely to recognise use of a trade mark in respect of such activities as indicating a “connection” with the trade mark owners.

In the Bingo decision the Assistant Registrar noted that while the Australian legislation allowed defensive registration not only of invented words but also of any distinctive trade mark registered in Part A, it was more difficult to achieve Part D registration if the trade mark was not an invented word. He also observed that if the word had any meaning in relation to the goods that would have to be taken into account in deciding whether or not it was capable of registration as a defensive trade mark.

In a more recent decision of the Registrar under the 1955 Act (Re Applications by Mobil Oil Corporation 32 IPR 535), Hearing Officer Williams applied the principles of the Ferodo case but allowed for the differences between the Australian and United Kingdom legislation. The trade mark for which defensive registration was sought, in a number of classes of goods and services, was the word mark Mobil limited to the colours blue and red with the letter O in red and the remaining letters in blue. While the applicant was required to restrict the very broad specifications as filed, the applications were allowed to proceed for goods and services which were not related to the class 4 goods and class 42 services for which the Part A trade marks were registered. The hearing officer took into account the special manner of rendition of the trade mark and the fact that the applicant’s business and trading interests were widely known and had been diversified to include convenience stores. He applied the principle stated by Evershed J in the Ferodo case that if the trade mark had been registered and used in respect of a wide variety of goods required by the common man, its application to other goods of even a very different kind might fairly lead to the inference of a trade connection.

6.2 Factors to consider in applying section 187

A ground for rejection under section 187 may apply if the Registrar is satisfied that use of the trade mark on the goods or services applied for in the defensive registration is not likely to indicate a connection between the goods or services and the applicant. This decision would depend upon the evidence provided by the applicant in support of the defensive trade mark and the nature of the connection of the goods and services to the applicant.

Comparison can be made with cases where the owners of well-known or famous trade marks were successful in restraining the use of their trade marks upon different goods from those for which their trade marks were registered (see Kodak case, 15 RPC 105 and Southern Cross case, 91 CLR 592).

The likelihood that the necessary connection will be inferred will be influenced by a number of factors, including the following:

6.2.1 The nature of the trade mark

Section 41 of the Act does not apply to defensive trade marks and there is no reference in Part 17 to any inherent characteristic which a defensive trade mark must possess in order to qualify for registration. The only explicitly stated requirement is that it must already have been registered and therefore it must have been found to be capable of distinguishing the goods or services for which it is already registered.

A trade mark which consists of unusual or invented (or otherwise inherently distinctive)material, that is widely known for use on a specified range of goods or services is more likely to be connected with other goods or services in the mind of the consumer than a trade mark which lacks inherent adaptation. The owner of a trade mark that is not considered to be inherently adapted to distinguish is likely to have to submit much more substantial evidence to establish that connection.

In addition, a trade mark may have qualified for registration in respect of the goods on which it has been used as a trade mark but have no inherent capacity to distinguish the goods or services specified in the defensive registration. For example, if the trade mark cappuccino was registered in respect of ‘carpets and rugs’ in Class 27 (or any other goods for which the mark had no meaning), no amount of use by the applicant could support a defensive registration in respect of ‘beverages’ in Class 30.

6.2.2 The existence of other registrations of the trade mark

If the trade mark is already registered in the name of other proprietor(s) this will be a factor in assessing whether consumers are likely to make a connection between the applicant for defensive registration and the designated goods. Even if the other registrations are not in respect of similar or closely related goods or services, and are therefore not citations, the fact that the mark is one used by others may tend to counter the effect of any reputation that attaches to the applicant for defensive registration. This will be particularly so where there is no significant disparity between the goods or services of the applicant for defensive registration and any third parties. In making this assessment, fair, notional use of the registered trade marks may be assumed in relation to all the goods in their respective specifications.

6.2.3 The extent of use of the trade mark as otherwise registered by the applicant

A primary consideration in deciding whether the trade mark qualifies for registration as a defensive trade mark in terms of subsection 185(1) is the extent to which the registered trade mark upon which the application is based has been used in respect of any or all of the goods for which it is registered. However, the extent of use refers to the intensity of marketing as well as its duration. A trade mark may become very well known after only a few years of very active marketing and promotion of goods or services bearing the mark. Both use and marketing are important measures of reputation - see McCormick & Co. v Mary McCormick, [2000] FCA 1335, 51 IPR 102, at paragraph 85 - and it is, in general, reputation that is the key to this matter. The extent of use required in each case must be assessed in the light of the other factors referred to in this section.

6.2.4 The goods or services upon which the registered trade mark has been used

As per Justice Evershed in the Ferodo case, the nature and range of goods on which the registered trade mark has been used will have an effect on the likelihood of the requirements being met for defensive registration in respect of different goods. He said “generally speaking the more special in character those goods are and the more limited the market, the less likely will be the inference required by the sub-section to be drawn in relation to goods of a very different kind”. The inference of the necessary connection being made he said was more likely “if the mark has been registered and used in respect of a wide variety of goods required by the common man”.

6.2.5 The goods or services specified in the application for defensive registration

In general, it will be easier for the applicant to make a case for defensive registration if the goods or services specified in the application are in some way related to those in respect of which the trade mark has already been registered and used. This is likely to be the case if the usual tests for “goods of the same description” and “closely related services” and for “services of the same description” and “closely related goods” are met.

Part 26 Section 44 and Regulation 4.25A - Conflict with other Signs - 4. Similarity of goods and services

However, since the broader infringement provisions under the 1995 Act already give the owner protection from infringing use of the trade mark in respect of such goods or services, it is more likely that applications for defensive registration will be in respect of unrelated goods or services. It will assist the applicant if they are goods or services which, given the established reputation of the applicant in the trade mark, are likely to ‘emanate from the same trade source’ but this is not a requirement under the Act. The connection which must be inferred between the applicant and the goods or services need not be a trade connection and the applicant may be able to make a case for defensive registration on goods or services quite unrelated to its primary business activity.

6.2.6 Evidence from the trade in question

The requirement for defensive registration is not simply that the trade mark should be well known or famous. In the Ferodo case, Justice Evershed gave the example of the word SPITFIRE which had acquired great fame in England at that time as the name of a fighter plane. He pointed out the fame was limited to the manner in which it was built up and that if it were to be applied to toothpaste as a trade mark, no connection in the course of trade would be inferred with the manufacturer of the aircraft of the same name.

The applicant should state the grounds upon which it claims that the necessary connection will be inferred. It may assist the applicant’s case if supportive declarations from members of the trade in question are provided. However, stereotyped declarations of the kind commonly relied on have been criticised in the courts and often do not carry convincing force. (See, for example, the comments of Evershed J in the Ferodo case 62 RPC 111 at page 124, and reiterated in the Mobil decision, supra.)