Do I Need to Register my Trademark?

This article was updated on 19 November 2016.

While there’s no legal requirement to register any trademark that you use, you should be aware that choosing not to register your trademark can have disadvantages.

No requirement to register

There’s no legal requirement to register any trademark that you use. In other words, you won’t be breaching any laws by failing to register your trademark before you use this (compare this with a business name or a company name, where you would be contravening the Corporations Act 2001 or Business Names Registration Act 2011 for failing to register the name before you use it).

So if you choose not to register your trademark, does this mean you won’t have any rights? Not exactly. It's possible to build up certain rights (often referred to as ‘common law’ rights) associated with the ‘goodwill’ that you create through your ongoing use of your mark. Goodwill is the quality which causes a customer to choose your product over that of a competitor.

Protecting unregistered trademarks – The need to establish your reputation

Although there are some rights in unregistered trademarks, the extent of these rights, the point in time at which they arise, and your ability to enforce them will often be uncertain.

If someone tries to copy your unregistered trademark by using the same mark, or something that’s similar, you might be able to stop them by taking them to court. Here you’d usually have two main options: (a) suing them for ‘passing off’ or, (b) suing them for engaging in ‘misleading and deceptive conduct’.

While different, actions in ‘passing off’ and those based on ‘misleading and deceptive conduct’ involve some similar elements. They are both essentially based on the idea that another trader is using a mark in such a way as to confuse the public into thinking that their goods are actually produced by you. Both of these options require you to establish some sort of reputation in the market place.

Difficulties often encountered when proving your ‘reputation’

One of the main things you’d have to do to protect an unregistered trademark, is to be able to prove to a court that you have a reputation in the relevant market. Although this may sound easy, it can be very difficult – and very expensive – to do. Here are some of the questions that you would need to be able to answer through the provision of acceptable evidence:

1. Do you have a business presence in the geographical area that your competitor also trades in? If not, can you prove that you have a reputation in that area? How will you do this? Can you prove that your ads were seen or heard in the relevant area? Can you call on market surveys that date back to the time when your mark was first being infringed (this being the time that the court will be interested in)?
2. To what class of persons are your marketing and promotion communications addressed, and is this the same class of persons that is being targeted by your competitor?
3. Can you show that your reputation is substantial? If you can't, it will be very difficult to prevent the other trader from using their mark which could be similar to yours, or claim a more than nominal amount of compensation.
4. How closely do you compete with the infringing trader? Some cases will fail unless you are using your marks for exactly the same goods or services, even though you might be in the same industry.
5. When did you start trading, and how can you prove this? Can you prove how great your reputation was at the particular point in time that the infringing trader started to use the same mark? If your reputation suddenly grew after the infringing conduct commenced, this would be irrelevant.

Don’t rely on your rights in an unregistered trademark

There are many advantages to registering a trademark. Perhaps the main one is that a registered trade mark for your name or logo is very similar to having a Certificate of Title to your land. If a trespasser tries to squat on your land, all you need to do in court is show that you have a certificate of title. You don’t need to prove who you bought it from, whether the original vendor actually owned the land, how much you paid them, how long you’ve been there, or who knows you live there. It is relatively quick and simple to produce a certificate with your name on it that is guaranteed by the government.

Registering your trademark involves the Federal government (i.e. IP Australia) issuing you with a document that proves you have a proprietary right in your mark.

How Epiphany Law can help you

Although you may have secured some rights by simply using your trademark, by far the best way to protect your goodwill is to register your trademark. Epiphany Law is a firm of intellectual property lawyers who offer IP registration services to clients from all walks of life. Contact us today.