Unregistered trade marks that have been used extensively and for a substantial period of time will acquire some protection in terms of the common law. This also applies to company names. The goodwill in an unregistered mark or name is protected against unlawful competition and passing off.
In order for Company A to successfully rely on passing off it must prove that its name or mark has acquired a reputation and is associated by the public with the services it offers. In addition it must show that the use by Company B of a name or mark that is the same or similar to its name or mark is likely to cause confusion. It must show that the public will assume that the companies are associated with each other in some way.
Company A will have to produce evidence of use in the form of invoices, trading information, advertising material etc. In addition it will have to establish a reputation by way of affidavits from various sources in the sector within which it trades, confirming that the name in question is associated with it. Compiling this evidence not only takes time but is very costly.
Such evidence is not required once statutory protection of a trade mark (including one sued only as a trade name) has been obtained. Once a trade mark has been registered the certificate of registration is prima facia evidence of rights in the trade mark. The proprietor of a registered trade mark may rely on the infringement provisions of the Trade Marks Act to prevent the unauthorised use of the trade mark or a similar mark or name, without having to prove that it has acquired a reputation in the trade mark.
- legal asset
The registration of a trade mark creates a legal asset which has commercial value. A registered trade mark can be assigned or licensed to a third party. It can even be hypothecated in order to raise capital;
- notice to third parties
Once a trade mark is registered the proprietor may use the symbol ®. In addition it will be entered on the Register and will be cited when third parties conduct clearance searches, thereby giving notice of prior rights to the trade mark in question. Similar trade marks, filed subsequent to the trade mark, are likely to be refused by the Registrar.
Registrations costs are relatively inexpensive and once registered a trade mark remains in force for a period of ten years. It can be renewed indefinitely for additional ten year periods. You are welcome to contact us for advice on the best way to protect your trade mark portfolio.