There are important reasons why you should register your trade marks. Some of these reasons are listed below:
By registering your trade mark in a particular territory, you obtain legal rights that can allow you to prevent others from making unauthorised uses of conflicting signs (such as names, marks, logos, get-up or domain names) in that territory. The precise rights vary between territories depending on the applicable law.
In many countries, you can apply to register your trade mark, and may be able to secure a registration, even if you have not yet started to use your trade mark. This can enable you to take steps to protect your trade mark before you have committed to marketing or development costs.
Many companies carry out clearance searches of relevant trade mark registers before adopting a new trade mark. If you apply to register your trade mark in a particular country, then your trade mark should be found in searches covering that country. Accordingly, applying to register a trade mark can reduce the risk of others subsequently adopting conflicting marks. This can reduce the chance of disputes arising in the first place.
Some trade mark offices examine new trade mark applications to see whether they conflict with earlier trade mark applications or registrations belonging to others. If you have applied to register, or have registered, your trade mark, then these offices should refuse later applications filed by others for conflicting marks. Although the UK and European Union trade mark registries no longer refuse later applications in this way, leaving it to the holders of earlier rights to oppose or apply for cancellation, they still conduct searches, of varying extent. If you do not apply to register your trade mark, it will normally be left to you to discover whether there are relevant applications or registrations, and to take appropriate action, such as commencing oppositions or cancellation proceedings, if you have any grounds to do so.
A particularly important reason for registering your trade mark is that in most countries, including the UK, you do not automatically acquire rights in a trade mark just by starting to use it. Therefore, if you adopt a trade mark without registering it, you could be vulnerable to anyone who registers a conflicting trade mark after your use began. Even though you began using your mark first, they might be able to rely on their registration to prevent your continued use (forcing you to incur the costs and inconvenience of re-branding) and to obtain other remedies against you, such as damages.
In many countries, including the UK, it can be possible to acquire some rights in relation to an unregistered trade mark if the trade mark is (very) well-known in the relevant country. However, very few trade marks are sufficiently well-known for this to be applicable.
The UK common law action of passing-off protects goodwill in a business rather than an unregistered trade mark as such. However, in some circumstances, you may be able to rely on passing-off to prevent another party from using a sign which conflicts with your trade mark regardless of whether or not your trade mark is registered. Nevertheless, it is strongly advisable to obtain a trade mark registration covering the UK, where possible, rather than seeking only to rely on passing-off rights. Some of the reasons for this are listed below:
- Passing-off is generally more difficult and expensive to prove than infringement of a registered trade mark.
- You cannot rely on passing-off to prevent another party using a sign which is deceptively similar to your trade mark if your trade mark is not distinctive of your goods and services and you do not have goodwill. This may be particularly relevant if your business is new, or you are planning to adopt a new trade mark, or to provide new products or services that are not a natural extension of your current business.
- If you currently only have customers in a particular locality, such as Edinburgh or Scotland or the North-West of England, you could find that you are unable to rely on passing-off to prevent others using conflicting signs outside this locality, and that you would be blocked from expanding your use outside the locality by the rights of others. In contrast, trade mark registrations generally give broad rights across a whole territory, even if a trade mark has not been used throughout the whole territory.
If you operate in a market where there is a risk of counterfeiting, then there are further advantages to registering a trade mark. Some misuses of registered UK trade marks are not just civil wrongs but are also criminal offences which may be enforced by Trading Standards or the Police. There are also provisions allowing Customs & Excise to seize goods or packaging bearing signs which infringe registered UK trade marks.