Many businesses have valuable trade marks without even realising it. These days a mark can be almost anything which enables customers to recognise your business. Firstly, the mark must be capable of being represented graphically. This includes shapes and packaging, as well as words (including slogans), letters, designs (pictorial trade marks) and numerals. Sounds and even smells may, in principle, be represented graphically. Secondly, the mark must be capable of distinguishing the goods or services of one business from those of another.

Until a few years ago first use rather than first registration was of primary importance. A first user could always defeat a later application even if the degree of use was not great. Under the 1994 Act, only unregistered marks with goodwill strong enough to sustain a passing-off action are recognised. A first user will no longer defeat a later application except in those particular circumstances, and the need to register is therefore much greater.

Here are a few important reasons to register your trade marks:

• Use of a validly registered trade mark automatically gives its owner immunity from infringing another registered trade mark. (Section 11.)
• Registration is prima facie proof of ownership.
• The owner of a registered trade mark has an exclusive right to the use of that mark.
• The right to sue for infringement arises only on registration, eliminating the need to establish and prove goodwill.
• There is no need to demonstrate (as in passing-off cases) that the infringement has caused, or is likely to cause, damage to the trade mark owner.
• A registered trade mark is a valuable piece of personal property, which can be bought and sold, licensed or even mortgaged.
• A registration can be obtained before the trade mark has been used, provided there is a bona fide intention to use the mark.
• A trade mark registration is entered on to a public register, which can be searched before a mark is adopted, thereby putting third parties on notice of trade mark ownership.

Note: There are some statutory exclusions which may preclude a mark from being registrable, and conflict with prior rights may also prevent registration.

© Craske & Co., 1998