Your brand has started to travel further than your product range. Customers recognise the name, the business is growing, and then someone in a completely different industry starts using a name close enough to yours that people assume a connection. Or you are about to put your brand on merchandise under licence, and you want to be sure nobody else can put it on products first. That is the moment the defensive trade mark question usually arrives: should I register my brand in classes of goods and services I do not actually sell?
It is a real question, but the answer is rarely a simple yes. A defensive trade mark is a specialist tool with strict preconditions, and for many businesses the smarter move is a standard registration in the right classes, or nothing at all. This guide walks through the decision: what a defensive trade mark is, the factors that justify one, what it costs, and where an experienced trade mark lawyer earns their fee.
The decision you are actually facing
A defensive trade mark is a registration over goods or services that you do not use and do not intend to use. Under s 185(1) of the Trade Marks Act 1995 (Cth), it is available where, because of the extent to which your registered mark has been used, use of the mark on other goods or services would likely be taken to indicate a connection with you. The logic is simple: some brands become so well known that putting the mark on an unrelated product would still make people assume the brand owner was behind it, which is exactly what a copycat wants you to be unable to stop.
So when you ask "should I get a defensive trade mark?", you are really choosing between three paths:
- Do nothing beyond your core registration: Rely on your reputation and the general law if a problem appears.
- File standard trade marks in extra classes: This works if you genuinely intend to expand into those classes, or at least have a real plan to use the mark there.
- File a defensive application: This is for classes you will probably never use, where the risk is that someone else uses your mark there and trades on your reputation.
One option you may be assuming is available is not: you cannot file a defensive application for a brand that is not already registered and established. The mark must be a registered trade mark in your name first, and the reputation test in s 185(1) must be met. A defensive trade mark is a layer on top of a core registration, not a replacement for one, and certainly not a shortcut for a brand that is still building recognition.
The factors to weigh
Is your mark registered, and does its reputation clear the bar?
The threshold question is the hardest one, and it decides everything else. Defensive registration is only open to the owner of a registered trade mark, and only where the extent of use means use of the mark on other goods or services would likely be taken to indicate a connection with you (s 185 of the Trade Marks Act 1995 (Cth)). If a defensive application is filed and the mark is not registered in your name, it must be rejected (s 187(c)). And the link to your core registration is ongoing: the Registrar can cancel the defensive registration if the underlying mark is no longer registered in your name (s 189).
Reputation is a question of evidence, not of having a popular Instagram account. In practice, the material that tends to carry weight includes:
- how long the brand has been used in Australia
- sales figures, revenue and market share
- advertising spend and the reach of campaigns
- media coverage and third-party reviews
- website traffic and customer recognition data
- industry awards and other independent recognition
If you cannot point to evidence like this, the connection test is hard to meet. This is where record keeping becomes a business asset: dated invoices, campaign reports, screenshots, press articles and analytics showing how far the brand reaches. You can start assembling that evidence pack now, before you need it.
How real is the risk in the classes you are not in?
A defensive trade mark is a response to a specific, evidence-backed risk, not a way to "own every class" because you can. The risk is real where:
- copycats are already using similar names in adjacent industries
- your brand gets applied to merchandise, apps or events without your involvement
- you plan to let others use the brand under licence and want clean rights to grant
- your brand could be attached to regulated or sensitive goods, where misuse would damage trust
- you are expanding quickly and your reputation is travelling ahead of your product range
If none of these apply, a defensive registration is likely money spent on a problem you do not have. If two or three do apply, it starts to look like a sensible insurance policy.
What you would actually cover
A defensive application can cover any or all of the goods and services outside your existing registrations, and you do not need to use or intend to use the mark in those classes (s 185(2) of the Trade Marks Act 1995 (Cth)). You can even hold a defensive registration in a class where you already hold a standard registration (s 185(3)).
The same 45-class system applies, so class selection and the wording of the specification matter just as much as they do for a normal filing. The instinct is to cover everything, but a well-drafted specification targets the classes where the connection or dilution risk is genuine: the categories customers would assume you had expanded into, the categories licensing commonly covers, and the categories where misuse would hurt most. A blanket specification is harder to justify to IP Australia and harder to defend if opposed.
What it costs, and what it saves you later
A defensive application goes through the same filing process and attracts the same official fees as a standard application. IP Australia's published fee for a trade mark application starts at around $250 per class (see the current trade mark fees), so a defensive filing in a handful of classes is not a huge outlay. The real difference is downstream. Compare the two paths:
- Standard multi-class registration: You must have a good-faith intention to use the mark in every class you cover (s 27(1)(b) of the Trade Marks Act 1995 (Cth)), and if you do not use it, anyone can apply to have it removed after three years of continuous non-use (s 92(4)(b)). Filing classes you never use is not just wasteful, it is actively vulnerable.
- Defensive registration: You do not need any intention to use the mark in the defensive classes (s 185(2)), and the non-use removal provisions of the Act do not apply to defensive trade marks at all (s 186). The registration can sit there doing its job without you ever selling a thing in that class.
That is the practical value proposition. A defensive registration protects the brand in classes where use would never happen, without the non-use exposure that makes speculative standard filings fragile.
The alternatives you should weigh first
Before committing to a defensive filing, consider what you already have. If your registered mark is well known in Australia, you may already be protected against unrelated use: s 120(3) of the Trade Marks Act 1995 (Cth) makes it an infringement to use a substantially identical or deceptively similar sign on unrelated goods or services where the sign would be taken to indicate a connection with you and your interests would be adversely affected. "Well known in Australia" is assessed by reference to the extent the mark is known within the relevant sector of the public, whether through promotion or otherwise (s 120(4)).
This matters for two reasons. First, a defensive registration is not the only route to stopping misuse of a famous mark, and a lawyer can advise on whether enforcement under s 120(3) is viable without one. Second, it shows the bar you need to meet: if your mark is not well known enough to engage s 120(3), it will struggle to clear the s 185(1) connection test for defensive registration either.
Timing also cuts in favour of acting early. Registration through IP Australia takes months, and you cannot file a defensive application until your core mark is registered. If you are planning a licensing deal, a rebrand or an expansion into adjacent products, the time to map out the class strategy is before you announce it, not after a copycat has filed first.
How an Artificer Legal trade mark lawyer can help you make the call
The decision turns on a legal test, an evidence assessment and a class strategy, and each of those is where a practitioner adds value. An Artificer Legal trade mark lawyer would start by stress-testing whether your mark's reputation actually meets the s 185(1) connection test, and by reviewing the evidence you have on hand to prove it. From there, the work is concrete: identifying the classes where the risk is real, drafting a specification that IP Australia will accept and opponents cannot attack, preparing the evidence of use and reputation that a defensive application needs, and filing through the proper process with the correct owner details.
The same lawyer then becomes useful after registration, because a defensive mark is only as good as the monitoring behind it. That means watching for copycat applications and uses, opposing conflicting marks before they register, and enforcing your rights with a well-drafted letter or, if needed, infringement proceedings. The cost of that monitoring is modest compared with the cost of discovering the problem five years after it started.
The test that settles it
If you take one question away from this article, make it this: if a stranger put your brand on an unrelated product, would customers assume it was yours? That is the s 185(1) question in plain language, and your honest answer tells you most of what you need to know. If the answer is yes, your mark is registered, and you have evidence of the reputation behind it, a defensive registration is a modest fee for protection across classes you will never use. If the answer is no, or your brand is still building recognition, spend the money on use, marketing and the standard classes you actually sell in, and revisit the question as the reputation grows.
To summarise the position: a defensive trade mark is a specialist layer of protection for registered, well-known marks against misuse in unrelated goods and services. It requires no intention to use and is immune from non-use removal, which is exactly why it suits classes you will never trade in. But it depends on a core registration and provable reputation, and it competes with alternatives that are often better value, particularly standard multi-class filing where expansion is genuine and s 120(3) enforcement where the mark is already famous. Weigh the reputation evidence, the real risk in the other classes, the specification and the costs, and get advice before you file.