World Trademark Review 28
Country correspondents
Unregistered trademarks
Canada - Bereskin & Parr LLP
While trademark rights can exist whether a trademark is registered or not, the advantages afforded to
registered marks, whether in respect of enforcement, remedies or provincial regulations, make registration
the recommended route to follow.
There are two types of unregistered
trademark. The first, type A, is a trademark
that is not registered in any class of goods or
services within its jurisdiction; the second,
type B, is a trademark that is registered in one
or more classes or subclasses, but not in the
class or subclass concerned in the dispute.
In India, the primary legislation governing
trademark protection is the Trademarks Act
1999. The right to institute infringement
proceedings under the act is available only
to the proprietors of a registered trademark.
Unregistered trademarks, such as trade
names, get-ups, trade descriptions, labelling
or packaging and other commercial signs,
are protected in Israel under various
grounds and actions.
In Italy, the Civil Code and the Industrial
Property Code ensure protection for
unregistered marks, as well as other
unregistered commercial signs (eg, insignia,
business names and company domain
names), but such protection is subject to
strict conditions and a number of
restrictions.
Trading under an unregistered mark is
never a good decision. However, there are
certain rights which, under Mexican law,
may allow you to continue its use.
The way in which commercial signs are
protected varies from country to country.
However, all legislation follows common
objectives.
All trademarks that are used in economic
activity may be grouped into certain
categories. This article focuses on registered
trademarks (ie, those which have been
granted protection by a decision of the
Patent Office) and trademarks which have
not been registered (ie, no official decision
on granting protection has been issued), but
which enjoy similar protection.
In Portugal, in order to obtain exclusive
rights in respect of a distinctive sign used in
trade, a decision of grant must be issued by
the competent administrative body, the
Trademark and Patent Office. The sign may
consist of a trademark or a logotype – a
Portuguese category of rights which, since
the revision of the Industrial Property Code
(Decree-Law 143/2008), includes names and
emblems of establishment.
Unregistered trademarks are protected under Romanian law if they are recognised as well known. Other
commercial signs, such as trade names and company logos, enjoy some level of protection under trademark
and unfair competition law.
Russia is a first-to-file country and
therefore, according to Russian legislation,
trademark rights apply from the moment
that the mark is state registered. No rights
derive from the use of an unregistered
trademark. However, when Part IV of the
Civil Code came into force in January 2008,
it afforded a degree of protection to
commercial indications or signs.
In the Spanish legal system, exclusive rights
over a trademark or trade name are obtained
through registration. Such registration
confers on the proprietor exclusive rights in
the relevant sign and allows it to prevent
unauthorised third parties from using the
sign in the course of trade.
In the United Kingdom, a brand owner can
protect its unregistered trademarks and
commercial signs through the common law
right of passing off. This concept has been
developed through case law and
manipulated to encompass a wide variety of
anti-competitive practices.
In the United States, protection is available
for unregistered marks under common law
and the federal statute known as the
Lanham Act (§ 43(a)(1), 15 USC § 1125(a)(1)
(1989)). The owner of a valid but
unregistered mark can seek recourse against
the copyist in state and federal courts.
