34.5. Grounds for rejection under Division 2 of Part 4 of the Act

Except for section 41, all of Division 2 of Part 4 of the Act and Regulation 4.15 applies to applications for registration of defensive trade marks.  All of those provisions operate within the limitation of section 33, which provides a basis for a "presumption of registrability".

5.1 Sections 39, 40 and 42

Sections 39, 40 and 42 need to be considered in the examination of applications for defensive trade marks.  However, as the trade mark must already have been registered otherwise than as a defensive trade mark, it is unlikely that grounds for rejection under these sections will need to be raised.  

Note: Caution will need to be exercised if the defensive application is in respect of goods to which other legislation is applicable, such as the Plant Breeder’s Rights Act 1994 or the Wine Australia Act 2013.  In that case there may be a ground for rejection under paragraph 42(b) which did not apply to the registration upon which the defensive application is based.

• Part 30 Signs that are Scandalous and Use Contrary to Law
• Part 31 Prescribed and Prohibited Signs
• Part 32A Examination of Trade Marks for Plants (in class 31)
• Part 32B Examination of Trade Marks for Wines (in class 33)

5.2 Section 43

A trade mark subject of an application for defensive registration may have a connotation in respect of the goods specified in that application which it did not have in respect of the goods covered by the registration upon which it is based.  Therefore, the possibility of the existence of grounds for rejection under section 43 must be considered.

• Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion

5.3 Section 44

The provisions of section 44 must be applied in examining applications for registration of defensive trade marks.  Similarly, a defensive registration may be a bar to registration of a later application for registration of a substantially identical or deceptively similar trade mark.

• ​​​​​​​Part 26 Section 44 and Regulation 4.15A - Conflict with other Signs​​​​​​​​​​​​​​

The criteria for citation of an earlier application or registration against an application for a defensive trade mark are the same as if the trade mark was filed as an ordinary trade mark with an intention that it should be used by the applicant. (see Re Applications by Mobil Oil Corporation 32 IPR 535). Hearing officer Williams noted that the existence of a citation strikes at the basis of the application for defensive registration. The existence of a citation suggests, contrary to the terms of section 187, that the use of the trade mark by a person other than the applicant for defensive registration would not cause deception or confusion.  If the cited trade mark is being used, the defensive applicant's case is, on the face of it, not within the scope of section 187.  If the cited trade mark is not being used, removal is an option for the owner of the defensive application.

The reverse situation, where the citation was of a defensive trade mark against a standard application, was considered in Chanel Ltd v Chronogem Ltd 19 IPR 21.  Assistant Registrar Farquhar found that the opposition failed because the marks were not substantially identical or deceptively similar. However, she observed that the fact that the opponent’s mark was a defensive trade mark had no bearing on the relevance of the section 33 objection noting that “[for] the purpose of assessing the section 33 objection, fair, notional use of the registration in relation to all the specified goods is to be assumed, just as is the case with registrations in other Parts of the Register”.