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5. Defensive Trade Marks
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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.
5.2 Registered Defensive Trade Marks
5.2.1 Registered status
Defensive trade marks that were registered under the Trade Marks Act 1953, and that were valid immediately before the commencement of the Trade Marks Act 2002, are deemed to be registered under the Trade Marks Act 200234 and retain their original dates of registration.35
Given that no provision is made in the Trade Marks Act 2002 for defensive trade marks, then upon the commencement of the Trade Marks Act 2002, registered defensive trade marks are deemed to be registered as ordinary trade marks.
Footnotes
34 See section 208(3)(a) of the Trade Marks Act 2002.
35 See section 208(3)(b) of the Trade Marks Act 2002.
5.2.2 Renewal
Defensive trade marks that were registered under the Trade Marks Act 1953, and that were valid immediately before the commencement of the Trade Marks Act 2002, retain their existing registration periods of either 7 or 14 years, as applicable.36
Upon the expiry of the existing registration period the registration will be renewable for periods of 10 years at a time in accordance with section 58 of the Trade Marks Act 2002,37 regardless of when the renewal application is received.38
The comments made earlier in these Guidelines39 regarding sections 59(2)(c) and 59(3) of the Trade Marks Act 2002 apply equally to the first renewal of a defensive trade mark under the Trade Marks Act 2002.
Footnotes
36 See section 208(3)(c) of the Trade Marks Act 2002.
37 See section 208(3)(c) of the Trade Marks Act 2002.
38 The Trade Marks Act 2002 applies even in instances where the renewal application was received before the commencement of the Trade Marks Act 2002, as section 203(1)(b) of the Trade Marks Act 2002 does not apply to applications in respect of defensive trade marks by virtue of section 203(2) of the same Act.
5.2.3 Applications for alteration, assignment, expunction or cancellation
Applications for the alteration, assignment, expunction or cancellation of registered defensive trade marks will be processed in accordance with the Trade Marks Act 2002 regardless of when those applications are received.40
Footnotes
40 The Trade Marks Act 2002 applies even in instances where the applications for alteration, assignment, expunction or cancellation were received before the commencement of the Trade Marks Act 2002, as section 203(1)(b) of the Trade Marks Act 2002 does not apply to applications in respect of defensive trade marks by virtue of section 203(2) of the same Act.
5.2.4 Proceedings in relation to registered defensive trade marks
Any proceedings that commenced prior to the commencement of the Trade Marks Act 2002 in relation to registered defensive trade marks will be processed in accordance with the Trade Marks Act 1953.41
Proceedings that commence after the commencement of the Trade Marks Act 2002 in relation to registered defensive trade marks will be processed in accordance with the Trade Marks Act 2002.
Footnotes
41 See section 203(1)(c) of the Trade Marks Act 2002. Section 203(2) does not appear to except proceedings in relation to registered defensive trade marks from the ambit of section 203(1)(c), as section 203(1)(c) concerns “proceedings” rather than “applications”.
5.2.5 Revocation on the grounds of non-use
A trade mark that was registered as a defensive trade mark under the Trade Marks Act 1953 cannot be revoked under section 66(1)(a) of the Trade Marks Act 2002 until three years after the commencement of the Trade Marks Act 2002,42 but can be revoked under that section after that three year period has elapsed.
Footnote
42 See section 208(7) of the Trade Marks Act 2002.
