The Intersection between Registered and Unregistered Trade Marks

Abstract

The principal justification for registration is that trade mark registers act as an important source of public information. More specifically, trade mark registers provide information as to the signs that are protected in a given commercial sphere and as to matters such as initial ownership of trade marks and subsequent assignments thereof. Consequently, in order for a trade mark register to perform its function effectively, it is essential that it reflect as accurately as possible the marks that enjoy legal protection and that those consulting the register are able to rely on the information it conveys. Few countries, however, require registration as a precondition of trade mark protection. Unregistered trade marks are instead protected through a variety of mechanisms: through specific legislative provision; by general unfair competition or consumer protection laws; or through common law actions such as the tort of passing off. Surprisingly, it is rarely, if ever, noted that maintaining protection for unregistered marks has the potential to undermine significantly the effectiveness of the registered trade mark system. Most obviously, protection for unregistered marks means that a trader who consults the register with a view to determining whether it is safe to use a particular sign will not be able to rely on a finding that no confusingly similar sign has been registered it will still be necessary to conduct expensive and time-consuming searches in order to determine which other signs may enjoy legal protection. In addition, registered trade mark systems almost invariably provide a facility for cancelling a registered trade mark on the basis that it conflicts with an earlier unregistered mark. This means that a would-be purchaser, mortgagee or franchisee who consults the register in order to check that a mark has been validly registered cannot know whether the registration is vulnerable to a challenge by the proprietor of an earlier, unregistered mark.