Registered Trade Mark Protection v Common Law Rights

Registration of a trade mark gives the owner the exclusive right to use the mark for the goods or services for which it is has been registered in that country.

Registration is a significant deterrent to other traders and provides concrete proof of a claim to legal rights.

Whilst trade marks which have been used and acquired a reputation also enjoy legal protection in a number of countries, it is generally easier to protect a registered trade mark against unauthorised use.

In the United Kingdom, traders can acquire 'common law rights' in a trade mark by using that trade mark in the course of trade for a number of years or, to a significant extent such that the trade mark enjoys a reputation with the relevant public. In legal terms, the trader is said to enjoy goodwill in the unregistered trade mark. UK law would allow this trader to prevent use by a third party of a similar name where use of that similar name was likely to cause a misrepresentation to the public (eg, confusion between the two trade marks) resulting in damage to the original trader. These are refereed to as passing off rights, ie, the second trader seeks to pass off his merchandise as that of the original trader.

Whilst passing off rights can be an effective means of enforcing unregistered trade mark rights in the United Kingdom, the first hurdle in being able to enforce such rights is to prove that they actually exist. Careful documentary evidence will be required proving the nature of the use, the longevity of use and the recognition of the name or logo etc by the relevant public in order to establish appropriate rights. Clearly documenting such rights in this way, to the satisfaction of the Court, is an expensive process; whereas where registered trade mark rights are involved, simple proof of the relevant registration certificate's existence will prove that that right exists.

Equally, from a deterrent effect, as is noted above, having a registered trade mark right can be readily demonstrated to an infringing third party whereas it can be more difficult to persuade third parties that you are in possession of common law rights acquired through use to a sufficient extent suitable to satisfy the Court.

Moreover, as predominantly a first-to-file system, whoever seeks to protect their trade mark first on the UK trade mark register or the Community Trade Mark register, ultimately will enjoy the best protection in the United Kingdom.

If you have used your unregistered trade mark in the United Kingdom for some time, this would not prevent a third party from obtaining the relevant registered trade mark. It would then be up to you to challenge that registration in reliance on your earlier unregistered rights documenting that these are in fact in existence as noted above.

Finally, taking this step to actually protect your brand as a registered trade mark is a demonstration to third parties of your commitment to the brand and that you regard it as your intellectual property right. For this reason, we would always recommend registered trade mark protection for your key brands and certainly for any brands which you would wish to enforce monopoly rights against third parties.