Defensive Registration of Trademarks as a Guard Against Bad Faith Trademarks by Chiamaka Anyanwu

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Upon the registration of a trademark, the owner of a trademark begins the onerous task of policing the market to protect the trademark by preventing infringement and dilution of the trademark, maintaining the distinctiveness of the trademark as well as the goodwill associated with the trademark.

In order to widen the protection afforded him under the umbrella of the Trademark Law, the owner of a Trademark may proceed on a defensive registration of his trademark.

A proprietor of a well known mark who does not intend to use his trademark in relation to goods or services beyond that for which they were originally registered, but desires to accord his trademark additional statutory protection, may opt for a defensive registration of his trademark. This is an exception to the requirement that a trademark must be “used or proposed to be used In relation to the class of goods or services for which it was registered”. A proprietor who has registered his trademark, but wishes to protect against the dilution of his trademark by preventing the use of identical or confusingly similar marks in relation to an unrelated class of goods and services may seek for protection via defensive registration. A defensive registration gives a proprietor protection over a third party who seeks to register or use the Trademark, or a confusingly similar trademark for a different goods or services than that offered by the proprietor. This registration is protected under Section 32 of the Trademarks Act, and acts as a protection against unfair competition, and against the removal of trademark for non-use.

For a mark to qualify for registration as a defensive mark, it must have passed the requirement of distinctiveness as set out in Section 9 of the Trade Marks Act. In addition, the mark must be well known in the mind of the consuming public, that it has attained a notoriety transcending its ordinary meaning. The popularity may have been acquired by the geographical reach, length of use, etc. The mark sought to be registered as a defensive mark must be such that the use of the mark immediately signifies a connection in the course of trade between the mark, and those entitled to use the mark. It is the “connection in the course of trade” that is sought to be protected by defensive registration.

Bad faith in trademark registration occurs when an applicant seeks to exploit the goodwill of a trademark, by the registration of a trademark identical or confusingly similar to an already existing trademark. The applicant knowingly infers the existence of a relationship between his mark and the well-known mark, in order to benefit off the goodwill and reputation of the well-known mark.

Bad faith can also exist where an applicant exploits the absence/non-registration of a trademark in relation to specific goods and services. This is mostly obtainable in the “first to file” jurisdictions, where statutory protection is accorded to the first to file for the registration of a trademark.

There is no yardstick for determining bad faith in trademark registration. More often than not, the intention behind the registration of the trademark is examined. Bad faith is easily established where the intention is, or results in unfair competition, or to forcefully obtain financial compensation from the true trademark owner, either via licensing or assignments.

A defensive registration provides protection against a third party wishing to profit off the goodwill and value associated with a trademark. Because of the requirement that a trademark must be “used or proposed to be used in relation to a class of goods/services”, defensive registration guards against those who seek to take advantage of a trademark that does not meet the requirement of “use or proposed to be used” in relation to a particular goods and services.

As the name suggests, Defensive registration acts as a defence, and not a sword. The purpose of filing defensive trademarks is to protect the uniqueness of the trademark, and prevent third parties who wish to take advantage of the absence of registration and exploit the trade mark for unrelated goods or services.

Defensive registration is very important for well-known trademarks, and an essential trademark portfolio protection strategy. It protects a trademark proprietor against third party applications, thereby avoiding the lengthy opposition proceedings, and litigation that may follow for trademark infringement. It also protects against the dilution of a trademark, which can arise from careless use of a trademark in the public domain.

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