34.7. Evidence required for defensive applications

An application for a defensive registration should be supported by evidence. Evidence must be supplied as a declaration and should be submitted in electronic format via the online services page. Providing clear digital images of any objects bearing the trade mark will be as effective as providing the objects themselves.

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 statutory declaration by the applicant or a responsible officer of the applicant company and should be two-fold.

Firstly, the reputation of the basic trade mark 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 should, if necessary, 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 above, paragraph 6.2.6, stereotyped declarations are generally of little value.

c. An alternative is a professionally conducted market survey.  If properly designed, this is likely to be very effective.

d. A list of like trade marks already registered and the goods or services for which they are registered should be provided.

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 reputation of the basic trade mark is such that an ordinary consumer would assume that the goods and/or services claimed in the defensive application were provided by the applicant.

Does the applicant have such an overwhelming reputation in the marketplace for their goods/services that use of the trade mark on different goods/services would lead to the assumption that the different goods/services could only originate from the applicant? In other words, consumers would conclude that the registered owner had expanded their use of the trade mark to include the different goods and/or services.  

In Ferodo Ltd’s Appn [1945] Ch 334, Evershed J rejected a defensive registration in respect of pharmaceuticals and tobacco the in the face of the applicant’s considerable reputation in respect of brake and clutch linings (UK case). Evershed J held that:

“the somewhat narrow and special field of manufacture to which the mark has been applied and become known increases the difficulty of establishing as a matter of fact that the adoption of the word “in relation to” goods of a widely different character would be likely, according to the standard of common sense, to lead to an inference of common origin.”

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 Re Pfizer Products Inc (2004) 61 PR 165; [2004] AIPC 91 to 992 (Reg) (the Viagra case), 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.