34.1. Australian trademarks law and defensive trade marks

1.1 General Introduction

Provisions for the registration of defensive trade marks were first introduced into the Australian trade marks legislation with the enactment of the Trade Marks Act 1955.

To qualify for a defensive trade mark registration, the trade mark had to be already registered in Australia as a distinctive trade mark. The trade mark had also to have been used to such an extent, on some or all of the goods and/or services for which it was registered, that the use of the trade mark in relation to other goods or services would be likely to be taken as indicating a connection between those other goods or services and the registered owner (“proprietor” under the 1955 Act). In these circumstances, the trade mark could be registered as a defensive trade mark in respect of those other goods or services.

In order to broaden the access to the infringement provisions under the 1955 Act, owners frequently registered their trade marks in respect of a much wider range of goods and/or services than they actually intended using their trade marks on, often specifying full class headings. While this may have discouraged other traders from encroaching, such registrations, if not covered under the specific part of the 1955 Act, could be challenged by a person able to show that the owner had not used the trade mark on the goods covered by registration.

To remedy this defect, the Defensive registration provisions of the 1995 legislation were introduced. Such registrations need not be underpinned by an intention to use the trade mark in trade, cannot be attacked for the lack of such use, and can give rise to an action for infringement.

1.2 Defensive trade marks under the Trade Marks Act 1995

Under the Trade Marks Act 1995, the provisions for infringement were broadened in several ways.  A trade mark is now infringed when a substantially identical or deceptively similar trade mark is used, not only on the goods or services for which the trade mark is registered, but also if it is used in respect of goods or services which are of the same description as, or closely related to the designated goods or services (section 120).

The test is even broader for a registered trade mark which can be shown to be well known.  For such trade marks it may be an infringement if the unauthorised use is in respect of goods or services dissimilar or unrelated to those in respect of which the well known trade mark is registered, provided the criteria referred to in subsection 120(3) apply.