Unregistered trade mark rights

The primary function of a trade mark is to distinguish your business from other businesses and identify your business as the source of particular goods and/or services. Trade marks usually include words, logos or a combination. In exceptional circumstances, a special feature of a product or a tune can also be considered as a trade mark if it functions to distinguish your goods and services from those of your competitors.

In contrast with copyright and design right, unregistered trade mark rights do not exist at the outset of the creation of a trade mark. Instead, they accumulate over a period of time and can usually be said to exist once the trade mark can be said to effectively distinguish your business from your competitors. In other words, unregistered trade mark rights can usually be said to exist in a particular territory once your trade mark has developed a reputation with respect to your goods and/ or services.

In the UK, when and only when the required reputation has been achieved, the law of passing off can be used to enforce an unregistered trade mark right. Passing off can prevent a competitor from essentially taking advantage of your hard work by using a similar or identical trade mark in the UK for similar or identical goods and/or services. It is also up to you to prove that the competitor has misrepresented his goods and services as being yours and that you have suffered harm as a result.

Achieving the required reputation can be very onerous and standards to prove a reputation are high. Therefore, if your business has been using a trade mark for a short period of time and/or has only used the trade mark in a small part of the UK, you may not be able to show the required reputation for an unregistered trade mark right. This may mean that you are unable to prevent a competitor, person, or business from using your trade mark despite you being the first to use the trade mark. It is also found to be burdensome to prove that the competitor has misrepresented his goods and that you have suffered harm.

Unless you can prove a case for passing off it will not be possible to prevent a third party from registering your trade mark as theirs in the UK. In order to avoid many of the problems with unregistered trade mark rights it is recommended that a registered trade mark is sought at the earliest opportunity.

Whilst unregistered rights do have an important role to play in the protection of trade marks it can be very difficult and expensive to prove a case for passing off and prevent competitors from using or even registering your trade mark. In other words, if you do not register your trade mark you run the risk that someone else will register the same trade mark and stop you from using it.

There is no maximum term for the protection of an unregistered trade mark right as long as the trade mark maintains a reputation for the relevant goods and/or services.

Unregistered trade mark rights are recognised in the UK, but are not acknowledged in all other countries and territories around the world.

It is permissible to use ™ with your unregistered trade mark, but unless your trade mark is registered you should not use ® with your unregistered trade mark.

An unregistered trade mark right is a form of property and so, it can be sold, given away, or licensed.

It is possible to register a trade mark. Please see our Comparison of Registered versus Unregistered rights for a list of the advantages and disadvantages of the different types of protection.

If you have a specific trade mark problem or matter, we would be happy to help.