3. Section of the Act NOT applying to defensive trade marks

Date Published

Most sections of the Trade Marks Act 1995 apply to defensive trade marks in the same way that they apply to other types of trade marks.  Section 186 of the Act sets out those provisions which do not apply, as follows:

  • Subsection 20(1), which relates to the exclusive right to use or authorise other persons to use the trade mark, does not apply to defensive trade marks.
  • Paragraph 27(1)(b), which relates to the intentions for use of a trade mark, does not apply because there is no requirement for a defensive trade mark to be used.
  • Section 41, which sets out the matters to be considered in deciding whether or not a trade mark is capable of distinguishing, does not apply to defensive trade marks.  A not entirely-comparable ground for rejection of a defensive trade mark exists under paragraph 187(d), which relates to the connection inferred between the specified goods or services and the registered trade mark owner (see paragraph 6 below).
  • Section 59, which provides for a ground of opposition on the basis of lack of intention to use, does not apply to defensive trade marks.
  • Section 121, relating to infringement by breach of certain restrictions, does not apply to defensive trade marks
  • Section 127, which precludes payment of damages in an infringement action if the plaintiff’s trade mark has not been used, does not apply to defensive trade marks.
  • Part 9, which deals with removal from the Register for non-use, and
  • Part 16, which deals with Certification Trade Marks.