Is It Compulsory to Register My Trade Mark in Australia?
George Raptis
Unlike registering your business name, trade mark registration is not a compulsory legal requirement. Instead, trade mark registration is an option to protect your intellectual property (IP) further. Namely, when you register a trade mark, you gain the exclusive rights to use, license and sell your mark. This means you can prevent others from using a similar or identical trade mark concerning similar goods and services. This article will outline:
- the differences between registered and unregistered trade marks; and
- your different options for enforcing your IP rights.
Difference Between Registered and Unregistered Trade Marks
As mentioned above, trade mark registration is not compulsory. However, it can be a beneficial way to protect your IP. In Australia, IP Australia reviews and registers trade mark applications on a public database. When you register a trade mark, you obtain the exclusive rights to:
- use;
- licence; and
- sell your trade mark.
This means you can take legal action if someone infringes on your trade mark.
Trade mark infringement can arise when someone uses a similar or identical trade mark concerning the same goods and services your trade mark protects. For example, if a boutique shoe company began branding their trainers with the Nike tick, the company would likely be infringed on Nike Inc.’s trade mark rights.
Registered trade mark protection lasts for ten years from its filing date. Additionally, there is no limit to how many times you can renew it for subsequent ten-year periods.
However, you may have trade mark rights even where you do not register your trade mark. In Australia, you can be the owner of an unregistered trade mark if:
- you are the first person to use a trade mark concerning a particular good or service; and
- no one has registered the trade mark with IP Australia.
Proving your rights to an unregistered trade mark can be more complex than if you registered your trade mark. Namely, if a dispute arose, you must be able to show that:
- consumers sufficiently recognise the trade mark as your business brand; and
- your goods and services have a good reputation in the market.
Since this can be difficult to prove, trade mark registration has become popular for many business owners.
How Can I Enforce My Rights?
If you are not in a position to register your trademarks, there are still ways you can protect your intellectual property. Namely, you may be able to enforce your rights as the owner of an unregistered trade mark if a trader has:
- passed off their own goods and services as your business’s goods and services; or
- engaged in misleading or deceptive conduct such that it contravenes Australian Consumer Law.
What is Passing Off?
Passing off is when a trader wrongfully misrepresents its goods and services as associated with your business’s goods and services. For example, say Nike tried to sell their products as Adidas products by using the same packaging and distributing them through similar channels. In this instance, Nike would likely be ‘passing off’ as Adidas.
Ultimately, the law prevents businesses from ‘passing off’ as another business. To successfully pursue a claim for passing off, you must prove that:
- your unregistered trade mark has a strong reputation in the market;
- the wrongdoer has made a misrepresentation; and
- you have suffered or are likely to suffer damage because of the misrepresentation.
You should note that without suffering damage as a direct cause of the wrongdoer’s ‘passing off’, you cannot make a claim. Damage can include monetary and non-monetary losses, such as damage to your business’ reputation.
What is Misleading or Deceptive Conduct?
Another way you can protect your IP rights is by claiming Australian Consumer Law (ACL). ACL prevents people or businesses from engaging in misleading or deceptive conduct that is likely to mislead or deceive consumers.
For this reason, if someone misuses your unregistered trade mark and causes confusion amongst consumers, you could pursue a claim under the ACL. However, whether a person or business made a misrepresentation will largely depend on your circumstance. As a general rule, a person or business will mislead or deceive consumers if they lead them to believe that your business has endorsed their goods or services or your business produces their goods or services.
Before you pursue a claim for ‘passing off’ or misleading and deceptive conduct, you should seek legal advice. An experienced IP lawyer can advise you on the strength of your case and inform you about what remedies are available to you.
Key Takeaways
Trademark registration is not compulsory. However, it can give you the exclusive right to use your trade mark, meaning you can take legal action if someone infringes on your trade mark rights. Suppose you are not in a position to register your trade mark. In that case, you may be able to rely on protections under the general law, such as pursuing a claim for ‘passing off’ and/or pursuing a claim for misleading and deceptive conduct.
If you have further questions about registering your trade mark, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
A trade mark can exist even if you have yet to register it with IP Australia. To this end, you may have rights to an unregistered trade mark if you can show that your goods and services have gained a sufficient reputation in the market and the mark you use is sufficiently recognisable as your brand by consumers.
Passing off is when a trader wrongfully misrepresents its goods and services as associated with your business’s goods and services.