Protecting Your Trademark: Defensive Registration of Trademarks

Business owners and manufacturers of goods and services use trademarks to indicate a connection between themselves as proprietors and their goods and services in the course of trade. Trademark becomes more valuable when it acquires goodwill. Goodwill refers to the inherent value of a trademark which it derives from the recognition given to it by customers.

It is usually indicated by the earnings the trademark generates- the earnings are generated because customers recognise the brand, favour the brand and are willing to purchase the goods and services associated with that trademark. The perception customers have about a brand determines customer loyalty and goodwill.

When a brand has goodwill, less known brands may often want to ride on the goodwill of the more known or famous brands. This may occur through trademark infringement, passing off, trademark dilution or bad faith registration. One way an established brand may protect against unfair competition and bad faith registration is through defensive registration of a trademark.

When a trademark is registered, it is usually registered in relation to particular goods or a class of goods. Infringement of the trademark occurs when a person having no right to use the trademark uses it in relation to those classes of goods in respect of which the trademark was registered. 1 When a registered trademark is used by a person who has no right to use it on
unrelated goods or goods in respect of which the trademark was not registered, it amounts to trademark dilution. The proprietor of a mark may not be able to establish trademark infringement when the trademark was used in relation to goods in respect of which the mark was not registered.

Yet, the unauthorised use of his registered trademark may be injurious to his commercial interests, because it waters down the uniqueness, distinctiveness and prestigious connotations of the registered mark. 2 The concept of defensive trademark registration is premised on the consideration that the use of a registered trademark on a non-related class of goods may be prejudicial to the interest of the trademark owner. Defensive trademark registration therefore protects a well-known mark from being commercially exploited by competitors, it also preserves the prestige of the brand and prevents trademark dilution.

Defensive trademark registration permits the registration of a trademark, not for use in the course of trade or commerce, but to afford a broad scope of protection to a well-known trademark, in order to guard against the use or registration of the trademark in connection to other goods or services by unauthorised persons.

A defensive trademark registration confers trademark protection across several classes of goods and services, thereby precluding all others from registering the same mark in relation to other classes of goods or services. Section 32 of the Trademark Act provides for the defensive registration of a trademark. A trademark will only be registered as a defensive trademark if it is a registered trademark. Section 32 of the Trademark Act enumerates the conditions that must be satisfied before a trademark can be registered as a defensive trademark, they are:

i. The registered trademark sought to be registered as a defensive mark must consist of an invented word or words. A trademark that consists of generic words will not be eligible for registration as a defensive mark, because the proprietor cannot preclude
others from using a common or generic word.

ii. It must be registered and must have been used in relation to the goods in respect of which it was registered (known as the ‘familiar goods’), such that its use has become so well known, that its use by an unauthorised person in relation to other goods would be taken as indicating a (false) connection between the proprietor and the familiar goods. This refers to the likelihood to deceive or cause confusion which an unauthorised use of a well-known mark may occasion.

Where the above conditions are satisfied, a registered trademark will be registered as a
defensive mark irrespective of the fact that the proprietor of the familiar goods does not use or propose to use the trademark in relation to the other classes of goods in respect of which the defensive mark is registered.

For as long as the registration subsists, the defensive trademark cannot be taken off the Trademarks Register on the ground of non-use. The registration of a trademark as a defensive mark does not preclude the proprietor from applying for a regular registration of the defensive mark in respect of any goods or services. 3

A defensive trademark registration may be cancelled if the conditions which necessitated its registration as a defensive mark in the first place cease to exist. It may also be cancelled when there is no longer any registration of the trademark in the proprietor’s name other than as a defensive mark. 4 This may happen when the trademark is assigned. The use of defensive
trademark registration is a valuable strategy for the protection of well-known marks.


Contents you might like

Non-registrable Trademarks: 5 Easy Guides to Choosing a Trademark

1 Section 5(1) and section 6(1) of the Trademarks Act.
2 TG Agitha, ‘Trademark Dilution: Indian Approach’ 2008 (50) 3 Journal of the Indian Law Institute 339, 342

3 Section 32(2) of the Trademark Act.
4 Section 32(5) of the Trademark Act.