Should I think of registration?

Registration is of course optional. As your business grows, you will develop goodwill in respect of signs and get up that you use to distinguish your business which can found an action under the common law for passing off. However, as it can take time to develop a significant goodwill, it can be difficult for new or small businesses to bring passing off actions. In addition, passing off actions require evidence of deception or likely deception which can be difficult to show.

However, by obtaining a registered trade mark the registrant is granted the exclusive right to use the mark in connection with the goods or services for which it is registered. By holding the registered trade mark the owner can take action for infringement against anyone who uses an identical mark on identical goods or services, uses an identical or similar mark in connection with identical or similar goods, where the use has caused or is likely to cause confusion and in some circumstances the owner may have the right to prevent use of an identical or similar mark on dissimilar goods. The protection is therefore wider, and easier to enforce, than relying on passing off.

Furthermore, by holding the registration the owner can make others aware of the registration and the registration is held on a public register which anyone can view and access. This may help to deter potential infringers if they know a particular trade mark is registered.

Last update on 28.09.11 by the ACID Team.

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