What Is a Common Law Trade Mark?
Angus
A common law trade mark is one that is not formally registered with IP Australia. However, such trade marks are in use within the marketplace to identify goods or services. They include names, phrases and logos that have a reputation in a certain region or area. Importantly, they do not have formal protection under IP Australia since they are unregistered, though they may have some protections under common law. For example, using the ™ symbol can give you a limited portion of rights. This article will discuss the considerations you need to understand before deciding whether to rely on the common law for your trade mark.
Common Law Trade Marks
By simply using a trade mark to sell your product or represent your company, you are utilising the common law to exercise your trade mark rights. You are essentially bypassing the registration process and cutting out the seven to eight month waiting period. Also, you will not need to pay the fees associated with a trade mark registration. However, common law trade marks do not provide the same level of protection as registered trade marks. For example, in some circumstances, you will find it challenging to stop a competing local business from selling under a similar trade mark to yours.
Still, there are some other advantages to relying on a common law trade mark. Due to the speed of common law trade marks, you can begin using a trade mark immediately. Alternatively, registered trade mark applicants are expected to undertake extensive online research before they may first use their trade mark. For example, they must search via:
- search engines;
- social media sites; and
- marketplaces.
It is fairly common for these applicants to hire a trade mark attorney to execute these clearance searches.
Additionally, area-specific restrictions attached to common law trade marks are what truly differentiates them from their registered counterparts. Australian trade mark common law requires brands to have established a recognisable reputation in their region. Having an established reputation provides some options to handle infringement cases. This is mainly because you have a stronger case to prove the reputation of your brand which was in existence before the other person started using your trade mark or a similar version.
Common Law vs Registered Trade Marks
While common law trade marks are relatively easy to obtain, essentially skipping the registration process, they offer a lower level of protection. A distinct difference between registered and unregistered trade marks is the use of the ™ or ® symbols. Any company can utilize the ™ symbol with an unregistered trade mark. Importantly, only applicants who have a recognised and registered mark with IP Australia can use the ® symbol above their trade mark.
Ultimately, formal registration provides more robust protection against those who may attempt to use your logo and infringe your trade mark rights. This can result in a loss of revenue as well as tarnished goodwill.
Tarnished goodwill is where customers change their perception of your brand due to a difference in quality among faux brands using either similar or identical branding.
However, in cases where a ™ symbol is representing a recognised brand within a specific region of Australia, the ‘first-use’ status of these common law trade marks comes in handy. First-use or first-to-use refers to a date when your business first started using your trade mark in the marketplace. Hence, if you find a third-party also using your trade mark, you have options to demonstrate that you were first to use the trade mark. Proof of clients and revenue will often allow these rights owners to escape infringement cases against registration applications.
Benefits of Registered Trade Marks
Registered trade mark owners receive several benefits. Firstly, your business name will receive full protection. Also, you can immediately take action concerning any infringement in the form of similar or copied trade marks. Additionally, IP Australia will record your business name on the Trade Marks Register, lowering the chances of infringement. You will also have added brand security on social platforms against online infringers or harassers.
Likewise, registration gives you strong enforcement rights and a strong legal position when you find yourself in dispute with another party using a similar trade mark as yours. With a registered trade mark, you have the ability to rely on IP Australia to block others from using your trade mark and infringing your rights.
On the other hand, the registration process can be expensive. It requires continuous use and renewal every decade. Also, you can only enforce rights if a copycat falls within your chosen class of trade mark. This means that other trade marks in different industries are free to use your logo or phrase, although you can avoid this with careful attention to detail when registering your trade mark.
Key Takeaways
Before you proceed to use a common law trade mark, you should be aware that:
- it is faster and easier to obtain a trade mark by common law, though protection is weaker;
- common law trade marks can use the ™ symbol, while registration with IP Australia provides the ® symbol; and
- there is an increased chance of lost revenue or goodwill with common law trade marks.
Ultimately, for the greatest protection, it is prudent to ensure you register your trade marks. A registered trade mark means you do not need to rely on common law rights, as they are more difficult to establish, argue and enforce. Likewise, you have options to legally enforce your trade mark in the case of infringement.
If you have any questions about how to obtain a trade mark, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
There are 45 different options to classify your trade mark. Each of these classes specifies different categories of goods or services that you would like to assign to your trade mark. When you register your trade mark, you choose certain classes, resulting in trade mark protection in those industries.
Although your mark will only have protection in your chosen classes, you can choose multiple classes to protect your brand. However, you will have to pay a fee for every class the trade mark is registered under. Likewise, you will need to show that each class actually applies to your brand.
If you have been using a consistent brand without trade mark protection, you may have some rights through a common law trade mark. However, this has some limitations and it is always best to consider registering your trade mark.