Can You Enforce Your Unregistered Trademark Rights

Branding is a significant aspect of your business and can be a crucial stepping stone to your success. Branding or creating a unique name, logo, or symbol for your business can help customers distinguish your brand from competitors. Many people who come with inquiries at our trademark law firm think obtaining registration for these branding collaterals turns them into a trademark. But, that’s not true. Once you create and use your brand name and logo, they become your Intellectual Property (IP) or your trademark.

Registration of trademarks is not mandatory. Many brand owners choose not to obtain registration for their marks. But, what happens in the event of infringement? Can unregistered trademark owners enforce their rights? The answer is yes. Let’s discuss this in detail below -

Understanding Unregistered Trademarks

Unregistered trademarks are simply trademarks that are not registered with the Canadian Intellectual Property Office. If you do not want to register your IP, you can use the unregistered trademark symbol - TM - with your marks. By doing so, you indicate that you consider the marked word, phrase or logo to be your trademark and also notify others of your rights to the IP.

Enforcing Rights of Unregistered Trademarks

As mentioned above, registration is not necessary for the legal protection of your mark against unauthorized use. Even if you have an unregistered mark, you are eligible to enforce your rights. You can enforce your rights under the common law tort of Passing Off.

If you face infringement, then you can file a lawsuit under the tort of passing off. The law of passing off arose on the basis of a simple notion that unfair use doesn’t necessitate prior registration. As per the law, if someone has achieved sufficient goodwill, then it is unfair for someone else to falsely pass off goods and services as their own under a similar name. While you can assert your trademark rights under this law, it requires you to pass certain requirements before doing so. As an unregistered trademark owner, to enforce your rights you must prove the following:

• There is sufficient goodwill attached to the mark
• There was misrepresentation that caused confusion among consumers
• There was actual or potential damage caused to you.

Considerations

Although unregistered trademark rights are enforceable, the scope of protection is limited. You can only secure legal protection in geographical areas where your mark is used and popular. So, you may be able to stop a business from using a similar name in your town, but you cannot stop every such business with a similar name as yours operating in other countries and towns. Plus, you cannot enjoy border protection rights that are bestowed upon registered mark owners. Also, in case of infringement, enforcing your rights comes with the burden of proof and is also costlier as compared to legal action for a registered trademark. If you do not succeed, it can lead to repercussions.

Consult a Trademark Law Firm

While registration is not a requirement, it is advisable to register your trademarks. If you have any doubts regarding registration or protection of unregistered marks, then consult our team at a Prowse Chowne LLP.