How to Prove Your Rights to an Unregistered Trade Mark

George Raptis

• 12 October 2021
• 12 October 2021
• 6 min read

When you are thinking about how to protect your intellectual property, you should consider that trade marks can exist even if you have not applied to IP Australia for a trade mark or if it yet to be approved as a trade mark. This is called an unregistered trade mark. Many businesses use unregistered trade marks to protect their brand when selling their goods and services. However, if a trade mark dispute arises, as the owner of the unregistered trade mark, you are required to prove your rights concerning the mark. When proving your rights to an unregistered trade mark, you have to establish that your mark:

1. has gained a sufficient reputation in the marketplace; and
2. is recognisable by consumers.

This article helps explain how to prove your common law rights to an unregistered trade mark to ensure you can protect your intellectual property if a dispute arises.

Sufficient Reputation and Recognition

If you want to take legal action to enforce your unregistered trade mark rights, you will have to prove that the trade mark exists. Unlike a registered trade mark, an unregistered trade mark can exist whether or not IP Australia has accepted it. This could be because your mark has gained a sufficient reputation in the market, and consumers closely associate this mark with your brand identity.

Whether your mark has gained such a reputation depends on the circumstances. For example, you would likely have to prove that competitors closely associate your trade mark with your business. Therefore, your evidence determines whether or not you can enforce your rights to an unregistered trade mark.

Enforcing Your Rights

You could enforce your rights to an unregistered trade mark if someone has:

• misrepresented goods and services; or
• engaged in misleading or deceptive conduct contrary to Australian Consumer Law.

These allow you to take legal action to enforce your rights. Although it is not unusual for an owner of an unregistered trade mark to pursue both of these claims at the same time, this article outlines the requirements for each claim separately below.

Passing Off Goods and Services

Passing off is when someone wrongfully misrepresents their goods and services as associated with someone else’s goods and services. The law of passing off protects a business’ goodwill by stopping others from ‘passing off’ as your own business.

There are three requirements to establish passing off. 

1. Your unregistered trade mark has established a strong reputation. This is largely determined by your circumstances and the evidence you can bring forward to prove your business’ reputation. Typically, your reputation must apply to the particular goods or services that the wrongdoer has misused or
   geographic region in which the ‘passing off’ has occurred.
2. You must prove that the wrongdoer has made a misrepresentation. A misrepresentation is when the wrongdoer has intentionally or unintentionally done something to indicate a connection between their goods or services and yours. This also depends on whether consumers were likely to be deceived by the wrongdoer’s representation.
3. Most importantly, you must prove that you have suffered damage due to the misrepresentation. This can include both monetary and non-monetary losses such as damage to your business’ reputation. In some cases, you might only need to prove that there is a chance that your business will lose money rather than proving an actual loss. However, without suffering some form of direct damage as a result, you cannot prove that passing off has occurred.  

Misleading or Deceptive Conduct

Owners of unregistered trade marks can also enforce their rights by seeking the protection of Australian Consumer Law (ACL). The ACL prevents individuals or businesses from engaging in:

• misleading or deceptive conduct, or 
• conduct that is likely to mislead or deceive consumers. 

If someone has misused your unregistered trade mark in a way that is likely to cause confusion amongst consumers in the market, you can pursue a claim under ACL.

To do this, you would have to prove that:

• your business has gained a sufficient reputation from use of its unregistered mark; and
• the individual or business that is misusing your unregistered trade mark is likely to mislead and confuse consumers.

As with passing off, whether a misrepresentation or deception has been made largely depends on the facts associated with the circumstances. Generally, a person or business will mislead or deceive consumers according to ACL if they lead them to believe that:

• there is an association between the goods and services they offer and your mark’s own goods or services; 
• your business has endorsed their goods or services; or 
• your business produces their goods or services.

If you want to pursue a claim under the ACL or passing off, you should seek the advice of a lawyer. They can advise you on the strength of your case and what remedies are available under both courses of action. 

Key Takeaways

You will have to prove your rights to your unregistered trade mark if a legal dispute arises. If someone misuses your unregistered trade mark, you can get compensation if you claim that they have passed off their goods or services as your own or if you claim that they have engaged in misleading or deceptive conduct under the ACL. Since both courses of action have different requirements and outcomes, you should consult a lawyer to consider which would be most beneficial to your circumstances. If you need advice on how to prove your rights to an unregistered trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.

Frequently Asked Questions