5.1 Applications to Register Defensive Trade Marks

Under the Trade Marks Act 1953, well known trade marks could be registered in respect of goods or services in which the owner of the trade mark did not trade or intend to trade, where use of the trade mark in relation to those goods or services by other traders would be likely to be taken as indicating a connection in the course of trade with the owner of the well known trade mark.³⁰

Under the Trade Marks Act 2002 it is not possible to apply to register a defensive trade mark, as no provision is made for such applications.

The transitional provisions expressly state that the Trade Marks Act 1953 does not continue to apply to applications for the registration of defensive trade marks that were received before the commencement of the Trade Marks Act 2002.³¹ The transitional provisions also state that the Commissioner must refund any fee paid in respect of an application for the registration of a defensive trade mark that was filed before the commencement of the Trade Marks Act 2002 and that was not yet registered at the commencement of the Trade Marks Act 2002.³²

These provisions clearly indicate that applications for the registration of defensive trade marks that were filed prior to the commencement of the Trade Marks Act 2002 may not proceed to registration after the commencement of the Trade Marks Act 2002.

On commencement of the Trade Marks Act 2002:

• The Commissioner will refund all fees paid in respect of applications to register defensive trade marks that are not yet registered.
• Applications to register defensive trade marks will be processed under the Trade Marks Act 2002. They will be rejected under section 43 of that Act, on the grounds that they have not been made in accordance with the Trade Marks Act 2002,³³ which does not provide for defensive trade mark registrations.

The combined effect of sections 203(1)(a) and 203(2) of the Trade Marks Act 2002 is that the Trade Marks Act 1953 does not apply to applications in respect of defensive trade marks, or “any proceedings related to” such applications, until the trade mark is registered. It follows from this that any proceedings that commenced prior to the commencement of the Trade Marks Act 2002 in relation to applications to register defensive trade marks will be processed in accordance with the Trade Marks Act 2002.

Footnotes

³⁰ See section 36 of the Trade Marks Act 1953.
³¹ See sections 203(2) and 203(1)(a) of the Trade Marks Act 2002.
³² See section 205 of the Trade Marks Act 2002.

^{33 See section 13(2)(a) of the Trade Marks Act 2002, which states that in order to be registrable under the Trade Marks Act 2002, the application must be made in accordance with that Act.}