Anaya Nolan
Trademark law varies from country to country, and only a handful of countries recognize common law trademark rights. These include the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies. In these jurisdictions, it is advisable to conduct a common law search before filing a trademark, as unregistered trademarks may still have some protection. For example, in the US, a trademark owner may enforce their exclusive right to use a mark in business operations without it being federally registered, but they must prove priority of use. In most other countries, trademarks are first-to-file, meaning rights go to the first to file a trademark application.
| Characteristics | Values |
|---|---|
| Countries that recognize common law trademark rights | United States, Canada, United Kingdom, Australia, New Zealand, and several other former British colonies |
| Protection in countries without common law trademark rights | Unregistered trademarks may be protected under laws related to unfair competition or passing off |
| Common law trademark rights in unregistered countries | Limited or requires more effort |
| Common law trademark rights in registered countries | Basic protection |
| Common law trademark rights search | Challenging and time-consuming |
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What You'll Learn
Common law trademark rights in the US
A common-law trademark, also known as an unregistered trademark, is a trademark that is established and protected by use in commerce in a specific geographic area. In the United States, common law trademark rights are automatic protections that arise from the actual use of a trademark in commerce. This means that a business can acquire common law trademark rights simply by using its trademark in its business operations, even without registering the trademark with the US Patent and Trademark Office (USPTO).
The geographic scope of common law trademark rights in the US is limited to the area where the trademark is used. For example, if a company sells a product under a specific brand name only in California, its common law trademark rights exist only in California. If another company starts selling a similar product under the same brand name in New York, there would be no trademark infringement. However, if the New York company attempted to sell its product in California, it would be prevented from doing so due to the California company's common law trademark rights in that state.
While common law trademark rights in the US can provide some basic local protection for a business, they have regional restrictions and are difficult to enforce. A common law trademark does not give a business the right to prevent others from using the same name in other states. Additionally, there is no public record of a common law trademark or when its use began, making it challenging to prove priority of use in the event of a lawsuit.
To overcome these limitations, businesses can strengthen their common law trademark rights by registering their trademarks with the USPTO. Federal registration provides substantial additional rights, including the right to sue infringers in federal court and the ability to prevent the importation of infringing goods. It also gives trademark holders a legal presumption of the right to use the trademark nationwide and makes it easier to apply for foreign trademark registrations. While federal registration is not required, it is generally recommended to provide stronger protection for a business's trademark.
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Common law trademark rights in Australia
A handful of countries currently recognize common-law trademark rights, including the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies. Trademark law varies from country to country.
In Australia, intellectual property law recognizes both registered and unregistered trademarks. An unregistered trademark, also known as a common-law trademark, is a sign that consumers can use to distinguish a business's goods and services from others in the market. Common-law trademarks are based on common-law practices that require a brand to have built up a reputation in the region where it files its trademark. The Australian trademark law provides limited protection for brand names, logos, phrases, and packaging.
Common-law trademarks in Australia are determined by the ''first to use' rule. This means that you may be recognized as the owner of a common-law trademark if you are the first person to use a trademark concerning a particular good or service, and no one has already registered that trademark with IP Australia for the same or similar goods. However, determining who was the first to use a common-law trademark can be highly contentious, and trademark registration can provide clarity and additional benefits.
While it is not compulsory to register a trademark in Australia, registration provides benefits such as the exclusive right to use the trademark when marketing goods and services, and stronger enforcement capabilities. Registered trademarks in Australia can include any sign or combination of signs, including letters, words, names, signatures, numerals, devices, brands, headings, labels, and packaging. Certain signs are prohibited from registration, such as the Australian coat of arms, and marks including the word "bank" for financial services, which require consent from the Australian Prudential Regulation Authority.
In summary, common-law trademark rights in Australia are recognized, but they offer limited protection. To ensure stronger protection of intellectual property, it is advisable to register trademarks officially.
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Common law trademark rights in Canada
In Canada, trademarks can be obtained through registration under the Trademarks Act or through the use of a mark in Canada over time. A registered trademark is a mark that has been officially registered with the Canadian Intellectual Property Office (CIPO) and is protected by the Canadian Trademarks Act. This provides the owner with exclusive rights to use the trademark in connection with their goods or services and enables them to take legal action against infringers.
On the other hand, a common law trademark in Canada is a mark that has not been registered with CIPO but has been used in association with goods or services in the Canadian marketplace. Common law trademarks can be protected by the common law of passing off or statutory passing off under the Trademarks Act, which safeguards against competitors using confusingly similar marks.
The main distinction is that the former generally offers the owner stronger and more comprehensive protection, while the latter provides limited protection. For instance, a registered trademark provides nationwide protection against trademark infringement and lasts as long as it is renewed. It also protects against depreciation of goodwill, allowing the owner to take legal action if their mark is used in a way that may damage its goodwill.
In contrast, a common law trademark owner must meet several criteria to successfully enforce its rights. They must possess reputation or goodwill in their mark and furnish evidence, such as surveys and sales data, demonstrating an association in consumers' minds between their unregistered trademark and the goods or services with which it is used. While this can be a long and expensive process, it is possible to prevent others from using similar marks if the criteria for passing off are met.
Overall, while Canada does recognize common law trademark rights, registration provides stronger protection and is a worthwhile investment, especially if a trademark is considered distinctive and has commercial potential.
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Common law trademark rights in the UK
In the UK, trademarks are registered through the UK Intellectual Property Office (UKIPO). Registered trademarks offer powerful rights to their proprietors and are considered important and valuable assets. The registration process involves examining whether the trademark is distinctive enough, and the entire process takes about three and a half to four months. Once a trademark is registered, it is valid for ten years, after which it needs to be renewed.
While registration is not mandatory, it offers stronger protection and clearer enforcement. Registered trademarks are published on a register, making it easier to establish the extent of the rights. On the other hand, unregistered trademarks rely on the common law principle of 'passing off', which is more challenging to enforce. This principle offers protection based on the trademark's reputation and goodwill in the marketplace, aiming to prevent confusion among consumers.
The UK recognises common law trademark rights, which means that in some cases, a trademark can be established solely through its use in commerce within a specific geographical area. However, this concept has evolved due to the internet, as businesses can now easily operate across the country and worldwide.
To register a trademark in the UK, it must fulfil the requirements set out in the Trade Marks Act 1994. The trademark must not be too descriptive of the goods or services it represents, and it should not be a commonly used name, shape, sign, logo, or sound in the marketplace. Additionally, a trademark cannot be a common surname, geographical name, national flag, or someone else's heraldic device.
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Common law trademark rights in other countries
Common law trademark rights are automatic protections that arise from the use of a trademark in commerce. In other words, a company can acquire common law trademark rights by simply using their trademark in their business. These rights are limited to the geographic area in which the mark is used. For example, if a coffee blend is sold under the name "Blaster" in California only, the trademark rights to that name exist only in California.
A handful of countries currently recognize common law trademark rights, including the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies. In the US, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration is not required to establish common law rights in a mark. However, federal registration gives trademark holders additional rights, such as the right to file a lawsuit in federal court to enforce their rights.
In countries that do not recognize common law trademark rights, it is still advisable to conduct a search covering unregistered trademarks, as they may be protected under other laws related to unfair competition or passing off. For example, in Australia, a trademark owner may be able to challenge the registration of their trademark by another party based on prior use.
Overall, while common law trademark rights are recognized in some countries, the protection they offer is limited compared to registered trademarks. To fully protect a brand, it is generally recommended to register trademarks in all countries of interest.
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Frequently asked questions
A handful of countries recognize common law trademark rights, including the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies.
Common law trademark rights, or unregistered trademarks, are trademarks established solely through use in commerce in a specific geographical area. In these cases, a trademark owner may enforce their exclusive right to use a mark in business operations even without it being federally registered.
In countries that do not recognize common law trademark rights, it is advisable to conduct a search covering unregistered trademarks as they may be protected under other laws related to unfair competition or passing off. To protect your brand in these countries, you must register your trademarks.
