There are numerous benefits in having a trade mark registration of one’s brands, including the following:
When enforcing rights in a registered trade mark (e.g. in legal proceedings) it is only necessary to prove the relevant statutory tests for trade mark infringement (including similarity to the registered mark). Unlike for unregistered trade marks, it is not necessary to prove reputation (and all of the other elements required to establish a passing off action). Consequently, the costs of any legal proceedings can be reduced and the outcome is often more predictable.
A trade mark registration generally provides nationwide rights in the country in which the mark is registered. Any ‘common law’ rights in an unregistered trade mark are likely to exist only within the region in which the trade mark has developed a reputation and goodwill.
Defence to Infringement
Registration of a trade mark generally provides a statutory defence to any allegation that the use of the trade mark (in respect of goods or services covered by the registration) infringes the trade mark registration of another entity. However, this defence does not provide any protection against allegations of ‘passing off’ or breaches of relevant sections of the Australian Consumer Law.
A registered trade mark is a more tangible right than an unregistered trade mark and a registered trade mark can generally be assigned with or without the goodwill of the relevant business in respect of which the trade mark is used. An unregistered trade mark, on the other hand, is inseparable from the business in which it is used and may not be assigned separately.
The existence of a registered trade mark has greater deterrent effect than an unregistered trade mark. It is more likely that another trader contemplating adopting the same or a similar trade mark will become aware of a registered trade mark (e.g. when conducting a trade mark availability search of the Trade Marks Register) and, as a result, refrain from adopting the contemplated trade mark.
A trade mark registration may also provide protection for a broader range of goods or services than those actually provided by the owner under the trade mark.
Another important reason for registering the trade marks of a business is in contemplation of the business being sold (or ‘floated’) some time in the future. Interested purchasers of (or potential investors in) the business are likely to want to be satisfied that all of the important intellectual property (including trade marks) of the business is properly protected.