It is best practice to register your trademark, as there are a number of benefits in doing so.
However, it is possible to build up rights in a mark without registration. Registered and unregistered trademarks each result in separate and distinct legal consequences trademark enforcement in germany.
A registered trademark is acquired by registering the mark with the relevant registry, so for example in the UK this would be with the Intellectual Property Office.
Owners of a registered trademark may use the symbol ®, and have the exclusive right to use the mark in relation to the categories of goods and services for which it is registered. This entitles them to take action against those who infringe their trademark rights.
Unregistered marks on the other hand, identified by the symbol ™, do not enjoy this formal protection. Their remedy lies in the doctrine of ‘passing off’.
Passing off is a court developed common law principle stemming from the early 17th century. It seeks to prevent a third party benefitting from another’s business reputation. Although giving protection against, imitators and others, a claim for passing off is generally a more complex and costly method of protecting your brand.
In basic terms, a passing off claim involves meeting the following three requirements. Firstly, you must establish goodwill in the mark. Goodwill is the reputation, the attractive force of your brand, which is generated by trading activity and advertising.
Secondly, there must be a misrepresentation made by a third party trader in the course of trade which leads to confusion or the likelihood of confusion on the part of the customer.
Thirdly, you must have been harmed in some way by the other person’s use of the mark, for example by suffering actual or likely financial loss.
The above elements can be difficult to prove and make for an expensive and uncertain cause of action. Passing off action is commonly claimed in conjunction with trademark infringement where a trademark is registered. So it is better used to reinforce your legal position. Depending solely on it generally gives you less negotiating power in resolving disputes.
Ultimately, given the hurdles involved in bringing a claim in passing off, it makes sense to protect the brand by registering a trademark.
When you are in the early stages of your business and other matters may seem more pressing, remember that it will save a considerable amount of distress, time and money in the future for you to just register your mark while you can do so. It secures your rights, and is a relatively small price to pay for the peace of mind and value to be derived from having exclusive rights in your own brand.