Part 34.10. Cancellation of defensive trade marks

Trade Marks Act 1995

Trade Mark Regulations 1995

Although Part 9 (Removal of Trade Mark from Register for Non-use) is not directly applicable to defensive trade marks, it may indirectly be used to attack the defensive registration. An action to cancel or remove the primary trade mark registration upon which the defensive registration is based may be brought, thus enabling the provisions of sections 88 and 189 of the Act to be invoked for the purpose of cancelling the defensive registration.  

Section 189 states that the Registrar may cancel registration of a trade mark as a defensive trade mark if the trade mark is not otherwise registered in the name of the registered owner of the defensive trade mark. 

Section 189 may apply if the primary trade mark registration on which the defensive trade mark is based ceases to be registered as a result of non-renewal, cancellation, or some other action that had the effect of removing the primary trade mark from the Register. It may also apply where the primary trade mark remains registered, but in a name other than that of the registered owner of the defensive trade mark.

Section 189 does not seem to allow the Registrar to cancel a defensive registration if a registration for the same trade mark exists in the name of the registered owner of the defensive trade mark, whether or not that trade mark was the one on which the defensive registration was based.
Prior to cancelling registration of a defensive trade mark, the Registrar should write to the owner offering the owner an opportunity to comment on the proposed cancellation. A period of one month should be provided for the owner to respond.