Unregistered Rights & Common Law Rights

In addition to the unregistered rights available under the Copyright Act 1994 and the Layout Designs Act 1994, there are also unregistered rights available for trade marks by way of the misleading and deceptive conduct provisions of the Fair Trading Act 1986 and the common law tort of passing off.

The Fair Trading Act prohibits traders from: engaging in misleading or deceptive conduct in trade generally and specifically in relation to goods, services and employment; making false representations in trade about goods, services, land and from certain conduct in relation to trade marks; and engaging in unfair practices in trade such as bait advertising, pyramid selling schemes and the offering of gifts and prizes.  For claims relating to misleading and deceptive conduct in respect of the use of an unregistered trade mark, the trader bringing the action must prove two elements: first, that it has reputation or goodwill in its mark, and second, that there has been a misrepresentation by the other trader with the result that consumers are either actually confused or will likely be confused.

The common law tort of passing off is similar (and often both claims are brought together) however under the common law tort of passing off, the trader bringing the action must also prove an additional third element - it must show that it has suffered loss or damage as a result of the misrepresentation made by the other trader.  The burden of evidence on a trade mark owner in bringing a passing-off action can be high and includes factors such as establishing the extent and area of reputation in the mark where confusion has occurred, and where loss has resulted. Some of this evidence may be difficult to gather, or involve sensitive material (such as financial records establishing extent of loss attributable to passing off).  Common law rights are also territorial, and thus having a strong reputation in the trade mark in one part of the country will afford little or no rights in another area where no reputation exists. 

In contrast, registration of a trade mark, where possible, bypasses these issues and focuses on the similarity of the trade marks. Consequently, trade mark registration is recommended, with sole reliance on common law rights consigned to cases where trade marks are considered unregistrable and the applicant does not wish to abandon their continuing use of the mark.