Part 34.7. Evidence required for defensive applications

Trade Marks Act 1995

Trade Mark Regulations 1995

An application for a defensive registration must be supported by evidence (Regulation 17.1). Evidence must be supplied as a declaration and should be submitted in electronic format via the online services page. Regulation 21.6 states that a declaration must be in an approved form. Declaration forms that are in the approved form are available on IP Australia’s website.

Evidence for a defensive registration should cover the following aspects:

a. Statement of case setting out full particulars of the facts on which the applicant relies in support of their application. This statement should take the form of a declaration by the applicant or a responsible officer of the applicant company together with supporting exhibits and should be two-fold.

Firstly, the extent to which the basic trade mark has been used must be clearly established by indicating:

i. duration and amount of use, specifying the goods or services in respect of which use has occurred;

ii. areas in respect of which use has occurred; and

iii. advertising methods and outlay and samples of dated advertising matter.

Secondly, the declarant should explain the basis on which the applicant’s claim for defensive registration is made. This should cover, for example, why potential consumers are likely to infer a connection with the applicant when the trade mark is used on different goods or services and the nature of that likely connection. Mere assertion is not a substitute for a convincing declaratory explanation of the applicant's case. 

b. Supporting declarations can be filed from members of the trade related to the goods or services for which defensive registration is sought. The reasons for the declarant’s assumption of an inferred connection should be stated.  As mentioned in Part 34,6.2.6, proforma declarations are generally of little value.

c. An alternative is a professionally conducted market survey.  If properly designed, this evidence may be persuasive. 

When assessing the declaration and the evidence provided the examiner should consider the following:

• The evidence being considered should be comprehensive in relation to the use claimed and the examples provided in support of the defensive application.
• The examiner would need to be satisfied (by the evidence provided) that the extent to which the basic trade mark has been used is such that an ordinary consumer would infer that the goods and/or services claimed in the defensive application were connected to the applicant.

The overarching question that must be answered for the purposes of section 187 of the Act is: has the applicant used the trade mark in the marketplace to such an extent for their goods/services that use of the trade mark on different goods/services would lead to the assumption the different goods/services were connected to the applicant? 

In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530; 156 IPR 413, Stewart J observed at [305] that ‘[…] s 185(1) requires connection between the goods and the registered proprietor of the mark, as opposed to “connexion in the course of trade”’. For example, consumers may infer that the applicant is connected to the different goods/services by way of sponsorship, brand collaboration, or that the applicant has expanded their use of the trade mark to include those goods/services. 

Stewart J went on to find that because of its overwhelming reputation, and the fact that the goods shared a substantially common market and could be complementary goods, use of BOTOX in relation to various unregulated cosmetic preparations in Class 3 would be likely to indicate a connection with the owner of the BOTOX mark. This was the case even though the BOTOX mark’s reputation was in relation to a very specific, highly regulated pharmaceutical product. However, Stewart J suggested that the necessary connection might not be likely in respect of less related goods such as cleaning products.  

In the UK case Ferodo Ltd’s Appn [1945] Ch 334, Evershed J rejected a defensive registration in respect of pharmaceuticals and tobacco despite the applicant’s considerable reputation in respect of brake and clutch linings, because the narrow and specialised nature of the goods for which the mark had been used made it unlikely that the necessary connection would be drawn in relation to goods of such a widely different character. 

In AT&T Corp’s Application [2001] ATMO 96, the Registrar decided that AT&T’s extensive use of the trademark in relation to telecommunication goods and services was a basis for a successful defensive registration for a very wide range of goods and services including education and entertainment services , surgical, medical and dental instruments. The Registrar decided that the commercial and cultural impact of the applicant’s activities extended far beyond its immediate field of commercial interest.

In Pfizer Products Inc [2004] ATMO 25  ("Viagra"), the Hearing Officer was satisfied that the “deepening fame” of the trade mark meant that a connection could be inferred for a wider group of goods than previously considered. The Hearing Officer also noted that the fact that the mark was completely invented word, the extent of use and accompanying reputation meant that it was unlikely that another trader would have any legitimate need to use the word “VIAGRA” as a trade mark.

In The Gillette Company LLC [2025] ATMO 236, the Registrar’s delegate found that the use of GILLETTE, mainly in relation to personal care products, was sufficient to allow registration of a defensive mark covering a wide range of consumer goods in classes 5, 10, 11, 14, 18, 21, 24, 25, 28, and 34. However, the evidence was insufficient to allow registration for complex or specialised unrelated goods such as machines or computers, or for services such as advertising, business management, medical services or veterinary services.