Are you concerned about the rights afforded to you by an unregistered trademark?
Registering your trademark gives you, the owner, exclusive rights to use that trademark and prevent others who have identical or confusingly similar marks. An unregistered trademark, despite distinguishing your business, is not protected by a legal statute in the way that registered marks are.
What rights do you have with an unregistered trademark?
An unregistered trademark has limited rights which can be difficult and more expensive to enforce, often leaving small or medium-sized businesses unprotected and vulnerable. If your unregistered trade mark is infringed by another party, your claim will have to be based on the law of passing off.
Passing off provides legal rights to stop another party from misrepresenting their goods or services as being of another. In simple terms, if another company were to use identical branding, visualisation or packaging in a way that could deceive the public, a claim for passing off can be made.
Requirements for a passing off claim
Passing off is difficult to prove. You need to prove that
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- your goods have acquired goodwill or reputation in the mind of the purchasing public and are known by some distinguishing feature;
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- there has been a misrepresentation (intentional or unintentional) by the other party which leads (or is likely to lead) consumers into thinking that goods offered by the other party are those of the claimant; and
To meet the misrepresentation aspect of the criteria, deception must have occurred or is likely to occur because of the misrepresentation that took place as a result of the infringer passing off your mark as their own. You will have to get evidence of the other party’s use of a similar mark, and to show that there is a likelihood of confusion amongst consumers.
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- damage has resulted or is likely to result as a consequence of the misrepresentation.
Lastly, to meet the damage aspect of this claim, your organization must have experienced some form of damage or at least the possibility of damage as a result of the infringer’s use of your mark.
