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This article discusses the differences between registered trade marks and unregistered trade marks.

There is a broad range of items that may be trade marked.  However, for the purposes of this article, we will confine the meaning of trade mark to be in the context of a name, slogan or a logo of a business.

Common Law Trade Mark

A common law trade mark is a mark that is not registered as such on the IP Australia trade mark database. The term “common law trade mark” and “unregistered trade mark” can be used interchangeably.  The advantage of a common law trade mark is that it doesn’t cost anything.  The disadvantage, however, is that it takes time to build the goodwill and reputation required to afford legal protection.

To protect common law trade marks, holders may rely on the common law tort of ‘passing off’ which is a legal action that aims to prevent another person from trading off the reputation or goodwill associated with another’s business.

However, taking legal action for passing off can be difficult, as common law trade mark holders must prove the mark has a reputation and goodwill, that the infringing party made a misrepresentation, and that misrepresentation caused damage or likely to cause damage to the business of the plaintiff.

Unregistered trade mark holders may also gain protection under the Australian Consumer Law (ACL).  Specifically, section 18 of the ACL ‘s misleading and deceptive conduct provision can prevent others from using the mark that you have worked so hard to build a reputation for.

The additional requirements to enforce common law trade marks can be onerous, time-consuming and costly.

Registered Trade Mark

Registered trade marks are marks that have been registered through IP Australia – the government body responsible for administering intellectual property.  Registered trade marks are protected by the Trade Marks Act.

A trade mark is a legal right to a ‘sign’ under section 17 of the Trade Marks Act
 A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
A sign is defined under section 6 Trade Marks Act as:
any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Once a registrant applies to IP Australia to have their trade mark registered, it will go through an “examination period”.  During this period, the trade mark examiner will review the application and provided there no other similar marks on the register and there are no objections to the application, the trade mark will be registered on the IP Australia database.  During the examination period, holders of both unregistered and registered trade marks may object to a mark’s registration.

See article: Trade Mark Registration Process in Australia.

Trade mark registration provides proof of exclusive rights to the mark and the date of when those rights commenced. However, trade mark registrants must have an intention to use the trade mark in commerce, otherwise, a person may apply to remove the trade mark from the IP Australia trade marks database for ‘non-use’.

A registered trade mark can be a valuable asset, that can increase the value of your business.  Common law trade mark owners need to seriously consider registering all trade marks in their business to get proper protection and to help prevent costly disputes.  While it is wise to register a company name and logo, companies need to be aware of registering packaging, slogans as well as product and service names.

Trade mark takeaways:

  • Intellectual property rights in an unregistered trade mark can be protected at common law, provided the mark has goodwill associated with the mark, and the infringing party makes a misrepresentation that causes damage (or is likely to cause damage) to the plaintiff.
  • Unregistered trade marks can be difficult and expensive to enforce.
  • Registered trade marks provide certainty of ownership and the proof of date of when the intellectual property rights commenced.
  • Trade mark registration makes it easier to prevent others using your trade mark, as IP Australia checks registered marks during the examination period.
  • A registered trade mark is a valuable asset, that often increases the value of a business.

What is a common law trade mark

A common law trade mark is one that is not registered on the IP Australia trade mark database.

What is IP Australia?

IP Australia is an Australian government administrative department that is responsible for overseeing intellectual property legislation relating to trade marks, copyright, patents and designs.

What is a cease and desist letter?

A cease and desist letter is sent by a party who believes another party is using their trade mark, or other intellectual property, demanding that they cease using the IP that they allegedly own.