In Australia, businesses can protect their brand names, logos, and other brand elements through registered trade marks under the Trade Marks Act 1995 (Cth). However, even without formal registration, businesses may have legal rights through what is known as a common law trade mark.
In this article, our intellectual property lawyers, discuss distinctions between common law trade marks and registered trade marks, outline the legal protections available, and explain why registering a trade mark is generally recommended for broader and more effective brand protection.
Key Takeaways
- Common law trade marks are built through consistent use and market recognition, not registration
- Common law trade marks provide brand protection via the tort of ‘passing off’ and Australian Consumer Law
- Protection is usually limited to geographic areas where your brand has established a reputation
- Enforcing common law rights is possible but can be complex and costly compared to registered trade marks
- Registering your trade mark is the most effective way to safeguard your brand nationally and prevent infringement
Understanding Common Law Trade Marks
Common Law trade marks are trade marks not registered with the Australian Intellectual Property Office. They are protected under Common Law principles based on their actual use and the goodwill associated with them.
Common Law Trade Mark vs Registered Trade Mark
The main difference between common law trade marks and registered trade marks lies in their legal protection.
Registered trade marks enjoy exclusive rights granted by law, which provide a stronger legal position and nationwide protection.
Common Law trade marks are established with continuous use and reputation within the geographical area. Unlike registered trade marks, which provide nationwide protection, common law rights are often geographically limited to where the business has built its reputation.
Feature | Common Law Trade Mark | Registered Trade Mark |
Legal Basis | Common law, ACL | |
Rights Arise From | Use and reputation | Registration process |
Protection Scope | Limited to established markets | Australia-wide protection |
Proof Requirements | Must prove reputation and use | Proof of registration is sufficient |
Examples of Common Law Trade Marks
These brands are widely registered but also benefit from common law protection due to extensive use and reputation:
- “Coca-Cola” – The Coca-Cola Company has a famous common law trade mark for its beverage brand. Due to its extensive use and high recognition, “Coca-Cola” has become synonymous with the particular cola product.
- “Vegemite” – Vegemite is a popular spread made from yeast extract. The name “Vegemite” has become a well-known common law trade mark in Australia, representing the specific product and its associated brand.
- “McDonald’s Golden Arches” – McDonald’s is another example of a company that has created a common law trade mark based on its iconic logo. The “Golden Arches” symbol, representing the fast-food chain, has gained significant recognition and protection through its extensive use in commerce.
- “R.M. Williams” – R.M. Williams is an Australian brand known for its high-quality leather goods, including boots and clothing. The mark ”R.M. Williams” has gained common law trade mark status, and represents the heritage and craftsmanship of the brand.
Secure your brand today. Contact us for a free consultation with an experienced Australian trade mark lawyer.
How Do Common Law Trade Marks Work?
To establish a common law trade mark, you must show:
- Long-term and widespread use of the mark in connection with your goods or services
- That consumers associate the mark with your business (i.e., it has acquired reputation or goodwill)
- That a competitor’s use of a similar mark is likely to mislead or deceive consumers
Legal Protections for Common Law Trade Marks
While not formally registered, common law trade marks can still be enforced. Legal avenues include:
- Passing Off: Passing off is a common law tort where a business falsely presents its goods or services as being associated with another brand. To prove this, the original brand must show that the business has a reputation or goodwill in the market. Additionally, the other party made a misrepresentation likely to deceive consumers, and you suffered damage as a result.
- Australian Consumer Law (ACL): Sections 18 and 29 of the ACL prohibit misleading or deceptive conduct and false representations. You may be able to rely on these provisions where another business uses your unregistered trade mark in a way that confuses customers.
Learn more about Intellectual Property law and protections in our guide.
How to Protect an Unregistered Trade Mark
If you’re relying on a common law trade mark, take steps to build and document your brand’s reputation. This can include:
- Using the mark consistently in all marketing and communications
- Documenting advertising spend, customer reviews, and media mentions
- Keeping records of how long and where you have used the mark
- Consulting a trade mark lawyer before disputes arise
Why Registering Your Trade Mark is a Smart Move
Although common law rights offer some protection, formal registration remains the most reliable and cost-effective way to secure trade mark rights in Australia.
Benefits of registering include:
- Nationwide protection
- Easier enforcement and legal remedies
- Notice to others of your ownership
- Asset value that can be sold or licensed
Learn the 10 Common Mistakes in Trademark Registration in our article.
Case Study: Kraft Foods Group Brands LLC v Bega Cheese Ltd
An example of the power and complexity of common law trade marks was illustrated in the well-publicised dispute between Bega Cheese and Kraft over the packaging of peanut butter products. Bega acquired Kraft’s peanut butter business in 2012. However, Kraft later re-entered the market using the same distinctive yellow lid and label design. Bega had not registered the trade mark for the peanut butter packaging. Instead, it relied on common law rights to assert ownership.
The Federal Court ruled in favour of Bega, stating that the goodwill in the peanut butter packaging had passed to Bega with the acquisition of Kraft’s peanut butter business. This case underscores the importance of commercial reputation in trade mark disputes and highlights how common law rights can still be powerfully enforced in Australia.
Common law trade marks can offer important protections for businesses that have built strong reputations, but those rights are limited and can be difficult to enforce. Registering your trade mark remains the most effective way to ensure comprehensive legal protection across Australia.
Frequently Asked Questions
Can I sue someone for using my unregistered trade mark?
Yes, under passing off or Australian Consumer Law, but you must prove your reputation and use in the mark and that there is a likelihood of consumer confusion where another entity wants to use your mark.
Is a common law trade mark valid across Australia?
Usually, no. Protection is typically limited to regions where the mark has an established reputation.
Speak to our experienced trade mark lawyers to find out more today.
Should I register my trade mark if I already have a strong brand?
Yes. Registration strengthens your legal position, simplifies enforcement, and protects your brand nationwide.
Learn more about Intellectual Property in Business Names in our article.
How much does it cost to register a trade mark in Australia?
Fees vary, but typically start around $250 per class of goods/services. Legal fees may apply for assistance with registration.
Can I have both a registered and common law trade mark?
Yes. Many businesses rely on both. Registering reinforces your rights and makes enforcement easier.
