Anaya Nolan
Common law trademark rights are granted to unregistered trademarks in some countries. These trademarks are protected by law, even without being federally registered, as long as they are in use. Countries that recognize common law trademark rights include the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies. Trademark law varies from country to country, and most countries do not recognize unregistered trademarks. In countries that do not recognize common law trademark rights, it is advisable to conduct a search for unregistered trademarks to avoid potential conflicts.
| Characteristics | Values |
|---|---|
| Countries recognizing common law trademark rights | United States, Canada, United Kingdom, Australia, New Zealand, and several other former British colonies |
| Common law trademark rights | Arise from the use of an unregistered trademark and do not require registration at the patent and trademark office |
| Registered trademarks symbol | ® |
| Unregistered trademarks protected by common law symbol | ™ |
| Common law trademark rights enforceability | Limited to and enforceable only in the geographic area in which the trademark is used |
| Lawsuit pursuance | The trademark owner must prove priority of use, showing that they were the first to use the mark in a specific geographic area |
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What You'll Learn
The US and unregistered trademarks
The United States is one of a handful of countries that recognize common law trademark rights. In the US, a trademark owner may enforce their exclusive right to use a mark in business operations even without it being federally registered. However, the protections for unregistered trademarks are limited compared to those for registered trademarks.
In the US, unregistered trademarks are protected under common law. This means that they are enforceable only within the geographic region or locale where the trademark owner is using it in business. For example, if a business in California has been using a certain trademark for years, they would have the right to sue a new business in California that starts using their trademark. However, they would not be able to sue a business in a different state or country that starts using their trademark.
To pursue a lawsuit, the owner of an unregistered trademark must prove priority of use, showing that they were the first to use the mark in a specific geographic area. They must also prove that their trademark is distinctive and identifies or distinguishes their products or services. This can be done through evidence such as advertising and marketing expenditures, consumer data, and media coverage.
While registration is not a prerequisite for federal trademark protection in the US, there are several advantages to registering a trademark. Registered trademarks serve as nationwide constructive notice of ownership and use of the mark. They can also achieve incontestable status after five years of continuous use, which enhances the owner's rights by eliminating a number of defenses to claims of infringement.
In summary, while the US does recognize common law trademark rights, it is still advisable for trademark owners to register their trademarks to gain additional protections and make it easier to pursue legal action in case of infringement.
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Common law trademark rights in Australia
In Australia, intellectual property law recognises both registered and unregistered trademarks. Unregistered trademarks, also known as common law trademarks, are signs that consumers can use to distinguish a business's goods and services from others in the market.
Common law trademarks arise from the use of an unregistered trademark, meaning that they do not require registration at the patent and trademark office. Common law trademarks are protected by the law in Australia, the United States, Canada, the United Kingdom, New Zealand, and several other former British colonies.
In Australia, common law trademarks are based on a common-law practice that requires a brand to have built up a reputation in the region in which a company files its common-law trademark. Common law, in this sense, provides limited protection for things like brand names, logos, phrases, and packaging. The rights that come with unregistered trademarks are limited to the protection of the reputation or goodwill of the business in which the trademark is used.
Common law trademarks might not adequately protect your intellectual property. As the owner of a common-law trademark, you may also be able to protect your rights by pursuing a claim for misleading or deceptive conduct under Australian Consumer Law.
Trademarks that are registrable in Australia include any sign or combination of signs, including any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound, or scent. Certain signs are prohibited from registration, either by operation of the Trademarks Act and Trademarks Regulations or as a result of other legislation. For example, images of the Swiss Cross may not be registered as part of a trademark without the minister's consent, and marks including the word 'bank' and covering financial services cannot be registered without consent from the Australian Prudential Regulation Authority.
It is not compulsory to register a trademark in Australia, but registration provides various benefits. For example, you enjoy the exclusive right to use your registered trademark when marketing your goods and services, and a registered trademark is also easier to enforce when required.
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Canada and common law trademark rights
Canada is one of the few countries that recognize common law trademark rights. This means that trademark rights in Canada can be obtained either through registration under the Trademarks Act or through the use of a mark in Canada over time.
Registration provides proof of trademark ownership and a presumption of validity until proven otherwise. It also offers nationwide protection against trademark infringement and protection against depreciation of goodwill. On the other hand, unregistered marks are afforded a narrower scope of protection, and their owners must meet several criteria to successfully enforce their rights.
To enforce their common law rights, unregistered trademark owners may bring an action for the common law tort of passing off, which requires proof of three elements:
- The owner of an unregistered mark must furnish evidence that demonstrates an association in the minds of consumers between its unregistered trademark and the goods or services with which the trademark is used.
- The unregistered trademark owner must show that they have been damaged by the defendant's use of a similar mark, such as through lost sales or damage to their brand reputation.
- The unregistered trademark owner must also show that the defendant acted deceitfully or with knowledge of the plaintiff's trademark rights.
While unregistered trademarks are protected in Canada, there are some limitations. For example, unregistered trademarks are only protected in the geographical area where the mark's distinctiveness can be proven. Additionally, the costs associated with pursuing or defending a trademark dispute without registered trademark rights can be significantly higher than the costs of trademark registration. Furthermore, unregistered trademarks do not provide protection against domain name registrations, which may be important for online businesses.
In conclusion, while Canada does recognize common law trademark rights, registering a trademark in Canada offers several advantages, including nationwide protection, protection against depreciation of goodwill, and simplified enforcement through an evidentiary presumption of trademark validity and ownership. Therefore, it is advisable for businesses to consult with a trademark professional and consider trademark registration as a worthwhile investment to protect their brands effectively.
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The UK's Passing off common law tort
Common law trademark rights are rights that arise from the use of an unregistered trademark. They are only enforceable in the geographic area where the trademark is used. A handful of countries recognise common law trademark rights, including the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies.
Passing off is a common law tort that can be used to enforce unregistered trademark rights. It protects the goodwill of a trader from misrepresentation. The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another. It also prevents a trader from claiming that their goods or services have some association or connection with another when this is not true.
The tort of passing off is particularly relevant when a trademark infringement action based on a registered trademark is unlikely to be successful. For example, in the case of two brands of confectionery both named "Refreshers", which had coexisted since the 1930s, it was held that consumers would be deceived as to the source of the products.
Passing off is also used by celebrities to enforce their personality rights in common law jurisdictions. Celebrities whose images or names have been used without authorisation can successfully sue for passing off.
A rare variety of passing off is "reverse passing off", which occurs when a trader markets another's product or service as being their own.
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Other former British colonies
In addition to the United States, Canada, the United Kingdom, Australia, and New Zealand, several other former British colonies also recognize common law trademark rights. However, it is important to note that trademark law can vary from country to country, and specific legislation may differ among these nations.
One example of a former British colony that recognizes common law trademark rights is India. India's Trademarks Act, 1999, provides for the protection of unregistered trademarks through the concept of "passing off," which is similar to the common law tort of the same name in the United Kingdom. This allows trademark owners to take legal action against infringers even without a registered trademark.
Another example is South Africa, which also recognizes common law trademark rights. In South Africa, the use of a trademark in commerce can establish priority of rights, similar to the concept of "first use" in other jurisdictions. This means that the first person to use a trademark in a specific geographic area may have stronger rights to it compared to subsequent users, even if they have not registered the trademark.
Hong Kong, another former British colony, has a hybrid system that recognizes both common law and statutory trademark rights. Under the Trade Marks Ordinance, unregistered trademarks can be protected through the concept of "passing off," similar to India and the UK. However, registered trademarks are also given additional protections and benefits under the law.
It is important to note that while these countries recognize common law trademark rights, the specific laws and procedures related to trademarks may differ. Each country may have its own unique requirements, regulations, and enforcement mechanisms. Therefore, it is essential to seek country-specific legal advice when dealing with trademark issues in these jurisdictions.
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Frequently asked questions
Common law trademark rights are recognized in the United States, Canada, the United Kingdom, Australia, New Zealand, and several other former British colonies.
Common law trademark rights are rights that arise from the use of an unregistered trademark. They do not require registration at the patent and trademark office.
In countries that recognize common law trademark rights, trademark owners may enforce their exclusive right to use a mark in business operations even without it being federally registered. However, the protection is limited to the geographic area in which the trademark is used.
To pursue a lawsuit, the trademark owner must prove priority of use, showing that they were the first to use the mark in a specific geographic area.
Registering a trademark provides more protection for your brand compared to relying on common law trademark rights. It is the safest way to protect your brand, especially when expanding into new markets.
