The Intersection between Registered and Unregistered Trade Marks

AuthorMichael Handler,Robert Burrell
Publication Date01 September 2007
Date01 September 2007
Robert Burrell
and Michael Handler
Much has been written about the general justifications for providing legal protection
for trade marks — for example, it has been said that trade marks help to reduce
consumer search costs,1 that they protect against the misappropriation of other traders'
labour and investment,2 and that they may provide traders with incentives to invest in
the development of new marks.3 However, it is important not to conflate these
justifications with the reasons for having registered trade mark systems. To the extent
that this issue has been considered, the principal justification for registration that has
been put forward is that trade mark registers act as an important source of public
information.4 More specifically, trade mark registers provide information as to the
Reader, TC Beirne School of Law, University of Queensland.
Senior Lecturer, Faculty of Law, University of New South Wales.
Our thanks go to Megan Jones, Kim Weatherall and the two anonymous referees for their
comments and suggestions.
1 See William Landes and Richard Posner, The Economic Structure of Intellectual Property Law
(2003) ch 7; Nicholas Economides, 'The Economics of Trademarks' (1988) 78 Trademark
Reporter 523, 525–6; I P L Png and David Reitman, 'Why Are Some Products Branded and
Others Not?' (1995) 38 Journal of Law and Economics 207.
2 See Anselm Kamperman Sanders, Unfair Competition Law: The Protection of Intellectual and
Industrial Creativity (1997).
3 See Vincent Chiappetta, 'Trademarks: More than Meets the Eye' [2003] University of Illinois
Journal of Law, Technology and Policy 35; Megan Richardson, 'Trade Marks and Language'
(2004) 26 Sydney Law Review 193.
4 See Lionel Bently and Robert Burrell, 'The Requirement of Trade Mark Use' (2002) 13
Australian Intellectual Property Journal 181, 183–4 and the sources cited therein; William van
Caenegem, 'Striking a Balance between Protecting Commercial Reputation and Promoting
Competition' (2003) 77 Australian Law Journal 598, 608. Admittedly, the role of registration
is more commonly addressed in terms of the private advantages that accrue to the trade
mark owner, such as the ability to secure protection prior to use or the facilitation of the
enforcement of rights in the mark. The advantages conferred by registration provide an
incentive for traders to register their marks, but such incentives are only desirable if the
registered trade mark system ultimately confers a benefit on the public. It is the value of the
register as a source of information that provides the principal public benefit of registration.
For a more detailed discussion of the informational value of trade mark registers and of
some of the other possible benefits (such as increased security for traders) that registration
376 Federal Law Review Volume 35
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;5 by general unfair competition or
consumer protection laws;6 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.7
There is no easy solution to the problem of having to reconcile the fact of legal
protection for unregistered marks with the day-to-day operation of the registered trade
mark system. The problem of reconciliation arises most acutely in proceedings before
trade mark registries, that is, when applications for registration of trade marks are
examined by registries or when oppositions to the registration of accepted applications
are brought before registries by third parties. On the one hand, if registries were
simply to ignore unregistered trade marks in examination and opposition proceedings
this would undercut the information function of the register. More marks would
survive to registration, but their use in the marketplace would be vulnerable to
challenge in later court proceedings. As Judge Learned Hand of the US Circuit Court of
might be said to provide, see Robert Burrell, 'Trade Mark Bureaucracies' in Graeme
Dinwoodie and Mark Janis (eds), Trademark Law and Theory: A Handbook of Contemporary
Research (forthcoming 2008).
5 For example, in the United States the Lanham Act makes express provision for the
protection of both registered and unregistered trade marks: see 15 USC § 1125 (2000).
6 For example, it is possible to prevent the unauthorised use of an unregistered trade mark in
Australia by reference to ss 52(1) and 53 of the Trade Practices Act 1974 (Cth) or equivalent
provisions of state and territory fair trading legislation: see Fair Trading Act 1992 (ACT) ss
12(1), 14(1); Fair Trading Act 1987 (NSW) ss 42(1), 44; Consumer Affairs and Fair Trading Act
1990 (NT) ss 42(1), 44; Fair Trading Act 1989 (Qld) ss 38(1), 40; Fair Trading Act 1987 (SA) ss
56(1), 58; Fair Trading Act 1990 (Tas) ss 14(1), 16; Fair Trading Act 1999 (Vic) ss 9(1), 12; Fair
Trading Act 1987 (WA) ss 10(1), 12(1).
7 There are, of course, other reasons why a mark might be vulnerable to being cancelled or
removed from the register. However, conducting a search for the existence of a conflicting
unregistered mark is amongst the most time-consuming and expensive enquiries that such
a party would be required to undertake.

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