It is not compulsory to register a trade mark in certain countries because trade mark rights in those countries may be either registered or unregistered.
If a trade mark is unregistered but has been used to such an extent that it has acquired a reputation amongst consumers in relation to certain goods or services, it may be possible to take action against unauthorised use of the unregistered trade mark under the common law action of “passing off”. However, in practical terms this can be more difficult and costly than enforcing a registered trade mark.
Although registration of a trade mark may not be compulsory, there are several important advantages in doing so:
- registration serves as a public notice to others that you own the trade mark and provides a deterrent against unauthorised use of your trade mark;
- registration assists in blocking competitors from trying to register the same or a similar trade mark in relation to similar goods or services;
- registration simplifies the procedural requirements for enforcement of trade mark rights compared to the enforcement of unregistered trade mark rights;
- registration makes it easier for customs to seize imported goods that infringe the registered trade mark; and
- registration makes it easier to assign and license the trade mark rights to others.