In Short
- Registered vs Unregistered Trade Marks – A registered trade mark provides stronger legal protection, exclusive rights, and easier enforcement, while an unregistered trade mark relies on reputation and consumer law for protection.
- Legal Protection – Unregistered marks may be defended using Australian Consumer Law and ‘passing off’ claims, but proving rights can be challenging. Registered trade marks offer nationwide protection and clearer enforcement pathways.
- Enforcement – Registered trade mark owners can easily stop infringers with a cease and desist letter or legal action. Enforcing an unregistered trade mark requires proving reputation and consumer confusion, which can be costly and complex.
Tips for Businesses
Registering your trade mark gives you exclusive rights and stronger legal protection, making enforcement simpler. While unregistered trade marks can offer some protection, proving your rights can be expensive and uncertain. If your brand is key to your business, consider trade mark registration early to avoid disputes and safeguard your reputation.
If you sell goods or services, you do so under a particular name, brand or trade mark. A trade mark can be registered or unregistered and refers to a sign distinguishing your products or services from others. This article will explain the differences between a registered and unregistered trade mark and the protection that each type of trade mark offers.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
What Can a Trade Mark Look Like?
A trade mark can be a:
- business name;
- product name;
- slogan;
- logo;
- colour;
- shape;
- scent; or
- sound.
Trade marks are crucial for distinguishing your business from competitors and enhancing brand value in the market. By protecting your unique brand elements, trade marks establish a clear identity for your products or services, aiding customers in recognising and remembering your offerings. As your business expands, your trade mark becomes an increasingly valuable asset, embodying the goodwill and reputation you have developed. It also offers legal protection against imitators who may confuse consumers or dilute your brand’s uniqueness.
Investing in trade mark protection is a strategic decision that safeguards your brand and lays a foundation for long-term success and growth.
What is an Unregistered Trade Mark?
An unregistered trade mark is a mark that a business uses to identify its goods or services without formal registration with IP Australia. These marks gain protection through their use in the marketplace and the reputation they develop over time. Unregistered trade marks are protected under the common law principles of passing off and by the Australian Consumer Law, which prohibits misleading and deceptive conduct. However, enforcing rights for an unregistered trade mark can be more challenging and costly than registered trade marks, as the owner must prove their reputation and the likelihood of consumer confusion. While unregistered trade marks offer some protection, registering a trade mark provides stronger, clearer, and more easily enforceable rights across Australia.
Continue reading this article below the formWhat is a Registered Trade Mark?
A registered trade mark in Australia is a legally protected asset that has been officially approved and recorded by IP Australia, the governing body responsible for intellectual property rights. It grants the owner exclusive rights to use, license, or sell the mark for the goods and services it is registered under. It provides protection for up to 10 years, which can be renewed indefinitely. Registered trade marks offer stronger legal protection than unregistered marks, making it easier to enforce rights and defend against infringement across the entire country.
Can I Enforce an Unregistered Trade Mark?
If another party uses your unregistered trade mark, you may be able to stop that person from doing so. This use of your unregistered mark may amount to:
- misleading and deceptive conduct; or
- a claim of ‘passing off’.
Misleading and Deceptive Conduct
The Australian Consumer Law (ACL) prohibits a person from engaging in conduct that is:
- misleading or deceptive; or
- likely to mislead or deceive.
In addition, the ACL prohibits a person from making false or misleading representations about goods or services. This includes representations that goods or services have another person or brand’s sponsorship, approval or affiliation.
To rely on the ACL, you first need to prove that you have built up a sufficient reputation using the mark. Second, you would need to prove that another person using the mark is likely to mislead and confuse consumers into believing that:
- there is some association between the infringer’s goods or services and your own;
- you have approved or endorsed the goods or services of the infringer; or
- you produced the infringer’s goods or services.
‘Passing Off’
You may be able to take legal action against an infringer based on the common law principle of ‘passing off’. This occurs when someone uses your mark to damage your reputation or goodwill. Passing off happens if the infringer’s use of your mark causes potential customers to associate their goods or services mistakenly with yours. If you can prove these elements, you have grounds to pursue legal action against the infringer, even without a registered trade mark.
How Do I Enforce a Registered Trade Mark?
Enforcing a registered trade mark in Australia will generally involve sending a cease and desist letter to the infringer. If this fails, legal proceedings can be brought, and various remedies can be sought. Registered trade marks simplify enforcement, as you need only prove the infringing use is substantially identical or deceptively similar to your mark.
Additionally, the geographic scope of infringement is broader with registered trade marks. If you use your trade mark to sell goods in Sydney and the infringer uses the trade mark in Perth, their use will still amount to trade mark infringement if you have a registered mark. If you had an unregistered trade mark and only sold goods in Sydney, someone using the same mark in Perth is unlikely to amount to misleading and deceptive conduct under the ACL.
Key Takeaways
It is optional to register your trade mark as an unregistered one, given that it can still provide your business with some protection. However, registering your trade mark gives you greater rights to protect and commercially exploit your mark. If your trade mark is an essential aspect of your business, you should ensure that you protect it sufficiently.
If you have questions about registered and unregistered trade marks, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
What is a registered trade mark?
If a trade mark is registered, it means that IP Australia has approved it, and it appears on a public register. This gives the owner exclusive rights to use or allow the use of the trade mark for the listed goods and services.
How do I enforce an unregistered trade mark?
If you need to protect an unregistered trade mark, you can rely on the Australian Consumer Law (ACL) provisions that deal with misleading and deceptive conduct or “passing off.” To do this, you must prove that you have a good reputation and significant use surrounding the mark and that the other party’s use of the mark misleads people into thinking certain connections do not exist.
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