One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Defensive Trade Marks
Defensive trade mark applications are generally filed by owners of well-known marks in respect of goods/services they have no intention of using, but for which they wish to proactively prevent another party from using or applying for a similar trade mark that would imply a connection to their brand under different goods and services. Defensive trade mark registration provides protection for extensively used trade marks against the misuse of their trade mark in a way that would harm the value or reputation of the trade mark. It also protects consumers from confusion that comes from a third party using a trade mark that is well-known.
According to the Trade Marks Act 1995, the owner of a defensive trade mark registration can obtain relief if their trade mark has been infringed. A defensive trade mark registration provides the most convenient access to relief from misuse of a trade mark. For a defensive trade mark, there is no requirement to use the trade mark covered by the registration. For this reason, a defensive trade mark cannot be removed from the register because of non-use.
One requirement for filing a defensive trade marks is that the trade mark should be already registered under its corresponding classes of goods and services during the time of application of the defensive trade mark.
Examples of defensive trade marks
The trade mark owner of VOGUE registered defensive trade marks under Class 42 in relation to retail and wholesale services in respect of perfume, essential oils, cosmetics, hair lotions, shampoos, hair conditioners, toilet soaps, printed matter, books, magazines, clothing, dressmaking and soft furnishing fabrics, bed linen, table linen and curtains; beauty salon services and photographic services in this class, (as well as other classes covering goods like rugs and mats and real estate services). VOGUE may have no interest in using the goods under the aforementioned classes; however, as a well-known brand, they wish to prevent any other trader from improperly using the mark for different goods.
In addition, defensive marks are not subject to non-use disputes, so a salon owner who wants to use the word “Vogue” cannot file a request for removal due to non-use against the owner of the VOGUE trade mark.
Nike and Aldi
Further examples of defensive trade marks are the companies NIKE and ALDI. NIKE has a defensive trade mark against beers and non-alcoholic beverages, while ALDI has a defensive trade mark against firearms, medical services, veterinary services, tattooing and security services. Both companies filed defensive trade marks under these respective classes to prevent the public from associating their brands with these goods and services.