Understanding the Term ‘Common Law Trade Mark’
George Raptis
In Australia, intellectual property law recognises both registered and unregistered trade marks. An unregistered trade mark, otherwise known as a common law trade mark, is not just a sign that someone has used for their goods and services. Rather, it is a sign that consumers can use to distinguish your business’ goods and services from others in the market. To help you understand the term ‘common law trade mark’, this article outlines the key differences between registered and unregistered trade marks.
What’s In a Name? Common Law Trade Marks
Prior to government registration of trade marks, the common law recognised people’s rights to trade marks. Common law refers to laws made by judges based on the decisions they make in court cases. We can distinguish the common law from statute law, which are Acts or pieces of legislation that Parliament makes. Unlike registered trade marks which enjoy protection under the Trade Marks Act in Australia, common law trade marks exist because:
- you have used a name, logo or slogan concerning the goods and services your business offers; and
- others recognise this name, logo or slogan as distinguishing your goods and services from those other businesses offer.
Owners of unregistered or common law trade marks often use the ‘™’ symbol. This can prevent others from misusing or copying their trade mark by noting the owner’s claimed rights in the trade mark.
Australia follows the ‘first to use’ rule to determine who owns a common law trade mark. This means that you may be recognised as the owner of a common law trade mark if:
- you are the first person to use a trade mark concerning a particular good or service; and
- no one has already registered that trade mark with IP Australia regarding the same or similar goods.
However, determining who was the first to use a common law trade mark can be highly contentious. Trade mark registration can take the guesswork out of who owns a trade mark. This is because the government agency, IP Australia, approves or rejects trade mark applications. IP Australia also maintains a public registry that lists registered trade marks and their respective owners.
As the owner of a registered trade mark, you enjoy the exclusive right to use, license and sell your trade mark concerning the goods and services listed in your application. This is in addition to the remedies available to protect a common law trade mark as outlined below.
Enforcing Your Trade Mark Rights
If you own a common law trade mark, you may be able to enforce your rights in the instance where someone has:
- misrepresented your business’ goods and services; or
- engaged in misleading or deceptive conduct.
If someone has wrongfully misrepresented their goods and services as being associated with yours, you might be able to establish the tort of ‘passing off’.
Passing Off
Passing off is where a business presents its goods as the goods of another party. For example, if Vegemite tried to sell their products as Marmite products using the same packaging and distribution channels, Vegemite would likely be ‘passing off’ as Marmite.
To successfully establish a case of passing off, you must prove that:
- your common law trade mark has a strong reputation in the market;
- the wrongdoer has made a misrepresentation; and
- you suffered damage or are likely to suffer damage due to the misrepresentation.
If you have to prove that your common law trade mark has gained a reputation, you should note that common law rights are limited to the specific territory where you have used your trade mark. For example, say you own a popular ice cream shop in Sydney. Whilst your store may be reputable within the area, you may not be able to prevent a third party from using a similar brand in a store located in Perth. For this reason, common law trade marks might not adequately protect your intellectual property.
Misleading or Deceptive Conduct
As the owner of a common law trade mark, you may also be able to protect your rights by pursuing a claim for misleading or deceptive conduct. Under Australian Consumer Law, a person or a business cannot engage in:
- misleading or deceptive conduct; or
- conduct that is likely to mislead or deceive consumers.
If someone misuses your common law trade mark and this causes confusion amongst consumers, you could pursue a claim under Australian Consumer Law. However, whether a misrepresentation has occurred or is likely to occur will largely depend on the facts in your circumstance. For example, a person or business might mislead or deceive consumers if they lead them to believe that your business has endorsed their goods or services. In any event, you should seek legal advice if you believe that a person or a business has engaged in misleading or deceptive conduct.
Key Takeaways
Common law trade marks or unregistered trade marks can exist where:
- you use your trade mark concerning the goods and services your business offers; and
- others recognise your trade mark as distinguishing your goods and services from those offered by other businesses.
Since your intellectual property is more adequately protected if you register a trade mark, it would be wise to consider trade mark registration. If you have further questions about registering your trade mark, call us on 1300 657 423 to speak to one of our experienced trade mark lawyers.
Frequently Asked Questions
Whilst it is not compulsory to register a trade mark in Australia, registration provides you with various benefits. Namely, you enjoy the exclusive right to use your registered trade mark when marketing your goods and services. A registered trade mark is also easier to enforce when required.
No. You can face considerable penalties if you use the reserved symbol for a trade mark that you have not registered. You should use the ™ symbol unless your trade mark is formally registered.