Registered and Unregistered Trade Marks: What Is The Difference?

George Raptis

• 15 July 2021
• 18 January 2022
• 6 min read

When you are beginning to consider protecting your business brand with trade marks, it might be tempting to overlook the difference between registered and unregistered trade marks. Put simply, the key difference between the two is that registered trade marks are filed with IP Australia, whereas unregistered trade marks are not. However, this difference has great implications for the type of legal protections available to you as the trade mark owner when you must enforce your intellectual property rights. This article outlines the differences between registered and unregistered trade marks and the enforcement rights for each.

Trade Mark Basics

A trade mark is a sign used to distinguish your goods and services from others. Trade marks can protect the things that make up a business’ brand, ranging from its name, logo, slogan or product names. 

As a form of intellectual property protection, trade mark owners have the exclusive right to use, licence and sell their trade marks. Trade mark owners hold these rights both concerning registered trade marks and unregistered trade marks. 

Registered Trade Marks 

A registered trade mark enjoys legal protection once IP Australia has approved and accepted the trade mark application. The trade mark is then listed on the Australian Trade Marks Search, which is available for public view. By registering trade marks, it is easier to identify trade mark owners, and resolve any disputes as to the exclusive rights held by trade mark owners. Registered trade marks will usually bear the reserved symbol ‘®’, but they can also carry the ‘™’ symbol if the owner chooses.

Unregistered Trade Marks 

However, the law also recognises that trade marks can exist even if the owner has not registered them with IP Australia. An unregistered trade mark (also referred to as a common law trade mark) arises where you can show that your:

• goods and services have a sufficient reputation in the market; and
• trade mark is recognisable to consumers as part of your brand. 

The ‘™’ symbol usually identifies unregistered trade marks. Despite not being registered, the law will allow owners of an unregistered trade mark to enforce their rights in limited circumstances.

Trade Mark Enforcement 

Since different areas of the law protect registered and unregistered trade marks, their enforcement in the instance of trade mark infringement is different. Trade mark infringement occurs when someone misuses your trade mark without your permission. Below are the different enforcement methods associated with registered and unregistered trade marks.

Registered Trade Marks

The Trade Marks Act protects registered trade marks more comprehensively than unregistered trade marks. As the owner of a registered trade mark, you can enforce your exclusive rights when a person uses a mark that is substantially identical or deceptively similar to your own trade mark. Their use must be concerning the particular goods or services that your trade mark protects, and they must be acting without your authorisation. You can demand that the other person stops acting in a way that infringes on your intellectual property rights, and in the instance where your business suffers a loss caused by the other party committing trade mark infringement, damages are available. 

Unregistered Trade Marks 

If another person uses your unregistered trade mark, you might be able to prevent that person from continuing to use your mark by bringing legal action against the person for:

• committing the tort of passing off; or 
• engaging in misleading or deceptive conduct contrary to Australian Consumer Law (ACL). 

Passing Off 

You can bring an action against the person who misused your mark for committing the tort of passing off if you can establish that:

• you have established a strong reputation in the disputed mark in your particular geographic region;
• this reputation applies to the particular good or service that the other person has misused; 
• consumers are likely to be deceived by the way the other person has represented the good or service; and 
• the person’s misrepresentation has harmed or is likely to harm your reputation in the disputed mark. 

Since establishing each of the elements of the tort can be difficult, it is wise to seek legal advice before committing to court proceedings to assess the strength of your claim. 

Misleading or Deceptive Conduct 

The ACL also prohibits individuals from engaging in conduct that is misleading or deceptive or likely to mislead or deceive. This can include instances where someone misuses your brand image. To rely upon the ACL, you must prove that your business has attained a sufficient reputation using the unregistered mark. You must also prove the person misusing your mark is likely to mislead and confuse consumers. You can prove this by showing that the other party led consumers to believe any of the following:

• there was some association between your goods and services and those of the person misuing your trade mark; 
• you endorsed the goods or services of the person misusing your mark; or 
• you produced the goods or services of the person misusing your mark. 

Key Takeaways 

Once IP Australia accepts a trade mark application, the registered trade mark enjoys comprehensive protection under the Trade Marks Act. In the instance where someone commits trade mark infringement, owners of a registered trade mark can enforce their rights and seek legal action against the infringer. 

On the other hand, unregistered trade marks only arise if your goods and services have a sufficient reputation in the market and the trade mark is recognisable to consumers as part of your brand. Unlike enforcing a registered trade mark, owners of unregistered trade marks have to rely on other legal courses of action to compensate for any loss their business reputation suffered. If you require legal assistance with understanding the difference between registered and unregistered trade marks, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.  

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