Part 18DEFENSIVE TRADE MARKS

PART 18—DEFENSIVE TRADE MARKS 192. This Part: (a) provides for the registration of certain trade marks as defensive trade marks; and (b) provides to what extent, and subject to what modifications or additions, the provisions of this Act relating to trade marks apply to defensive trade marks. Defensive trade marks 193.(1) If, because a registered trade mark has been used so much in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services. (2) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the registered owner does not intend to use the trade mark in relation to those goods or services. (3) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if it is already registered in the name of the applicant in respect of those goods or services otherwise than as a defensive trade mark. (4) A trade mark that is registered as a defensive trade mark in respect of particular goods or services may be subsequently registered otherwise than as a defensive trade mark in the name of the registered owner in respect of the same goods or services. 194. Subject to this Part, the provisions of this Act (other than subsection 19(1), sections 23, 24, 40, 57 and 130 and Part 9—Removal for non-use) apply to defensive trade marks and so apply as if a reference to a trade mark included a reference to a defensive trade mark. 195. An application for the registration of a trade mark as a defensive trade mark need not contain a statement referred to in subsection 25(4). Grounds for rejecting application 196. The application must be rejected: (a) if the trade mark is not registered as a trade mark in the name of the applicant; or (b) in the case of a registered trade mark—if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner. Cancellation of registration by order of court 197.(1) A prescribed court may, on the application of a person aggrieved, cancel the registration of a trade mark as a defensive trade mark in respect of ail or any of the goods or services in respect of which it is so registered if the requirements of subsection 193(1) arc no longer satisfied. (2) A person applying to a prescribed court under subsection (1) must give notice of the application to the Registrar. (3) On receiving the notice, the Registrar must appear if directed by the court to do so. Otherwise, the Registrar may appear before the court and be heard at his or her discretion. (4) If the court directs that the registration be cancelled: (a) a copy of the order must be given to the Registrar; and (b) the Registrar must comply with it. Cancellation of registration by Registrar 198. The Registrar may cancel the registration of a trade mark as a defensive trade mark if the trade mark is not otherwise registered in the name of the registered owner of the defensive trade mark.