34.4. Registrability of defensive trade marks

Section 33 of the Act applies in full to defensive trade marks.  The Registrar must accept an application for a defensive trade mark unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it.

4.1  Formality requirements

These are basically the same as for “standard” trade mark applications.  The applicant should also state the number of the trade mark registration upon which the application for defensive registration is based.  The application may be based on more than one registration, particularly if the application for registration of the defensive trade mark is multi-class.  The registration(s) must be in the name of the applicant (paragraph 187(c)).  If the application proceeds to acceptance, an endorsement stating the basis for the defensive registration is entered, as follows:

Registration of this trade mark as a defensive trade mark is based, as per subsection 185(1), on registered trade mark(s) XXXXXX

4.2  Substantive examination

There may be grounds for rejection of defensive trade marks under the general provisions of the Act and Regulations (excluding section 41) or under the provisions of section 187 which relate specifically to defensive trade marks.

Substantive examination cannot be completed until the evidence required by regulation 17.1 is filed.  The regulation requires the evidence to be filed at the time of filing the application for defensive registration, or as soon as practicable after filing.  However, if the case comes to examination without the evidence being filed, examination should be carried out as far as possible and any grounds for rejection should be reported on.  The applicant should be reminded of the need to file evidence and advised of the date on which the application will lapse (see paragraph (a) of subreg 4.12(1)).

Note: If the evidence under reg 17.1 is filed after the issue of the first report and a ground for rejection under section 187 must be raised in a further report, this will not result in additional time being allowed for acceptance.  Paragraph (b) of subreg 4.12(1) is only brought into operation if the new ground for rejection in a further report is raised under Division 2 of Part 4.