A brand owner should understand what common law rights are and how they can interact with registered trademarks.
The trademark registration system co-exists with common law trademark rights. Common law rights are acquired through actual use of the common law mark in association with goods or services. As a common law trademark becomes known and goodwill is associated with it, the owner of the mark will be able to assert claims against others who use confusing trademarks in the specific region or area where the common law trademark owner has built up goodwill. Common law trademark rights may be helpful on a case-by-case basis or may be impediments to overcome in other cases.
If a brand owner does not own a trademark registration it may still be possible to assert rights relating to common law trademark by bringing an action for passing off. However, it can be more difficult to succeed with such an action since in determining whether passing off has occurred the court looks at all of the parties' respective trade dress. For example, the use of different colours or designs in association with the trade dress in issue can be significant. Nonetheless, a claim for passing off can add a useful addition to a plaintiff's action. In actions for infringement of a registered trademark a claim for passing off is frequently included in the event that the registered trademark was found to be invalid or for other tactical reasons.
On the other hand, common law trademarks can frequently be an impediment. In the context of a trademark opposition, the use of the common law trademark can be the basis for a claim for entitlement on the part of the common law trademark owner. Even if a trademark registration is obtained a common law owner who used its mark first in Canada can seek expungement of the registration if the respective trademarks are confusing.
Because of concerns relating to the use of common law trademarks prudent brand owners arrange to have common law searches done when they are considering the availability and registrability of a mark. Unfortunately, many brand owners lose sight of this concern.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
