Date: 11 May 2017
by Geetha Kandiah from KASS International (Source)
Why should I register my trademark?
This is a question that we are often faced with. Valid one too.
Think of insurance. Why does one take various types of insurance? For protection. Against fire, against burglary, against critical illnesses, against accidents and so on.
Akin to insurance, trademark registration affords the brand owner better protection against a third party that copies their trademark on identical or similar goods/services. It affords protection against anyone that tries to steal their market share.
If you do not register your mark, you still have rights in that unregistered mark. This means you need not rush to the IP office to register your mark.
Having said that, that unregistered right that you have is a weaker right.
To stop the other party from misusing your unregistered rights, you will have to take a passing off action against the third party. In a passing off action, you will have to convince the judge (i) that you have reputation and goodwill in the specific trademark, (ii) that the other party has misrepresented to the public that your trademark belongs them and (iii) that you have suffered damages as a result of the misrepresentation.
In other words, a whole lot of evidence will need to be adduced at Court to establish that the trademark in dispute belongs to you and that the other party has “passed off” your trademark as theirs.
On the other hand, if you have registered your trademark and own a Certificate of Registration, when a third party infringes your mark (copies your mark) in relation to identical/similar goods or services, all you need to prove in Court is that you own the registered rights to the mark and therefore the other party has no rights to the mark.
Imagine trying to prove you are the owner of a house. Showing the Title Deed is evidence of ownership. Similar to that, showing the Certificate of Registration for your Trademark is evidence of ownership.
It is quicker and cheaper to sue for Trademark Infringement (as opposed to Passing Off of Trademark) as there is no requirement to prove reputation or goodwill in the mark.
(ii) Money, money, money
And by that, we mean "Commercialisation Opportunity". A trademark is your property, and registration would allow you to licence your trademark to others in a licence or franchise agreement, earning royalty fees. That is your passive income.
If you do not have the trademark registered, would an investor be keen to take up the license or franchise? Would they take the risk that comes along with expanding or investing in an unregistered brand?
With a registration, you can even sell the brand once it has built sufficient goodwill and reputation. Most businesses these days are bought for its extensive brand value.
(iii) Adds value to your brand
Once registered, you can put the ® symbol next to the brand and that impression you give your clients and your customers is that this brand is worth being associated with – it is so important that the brand owner has taken the initiative to protect the brand.
There you have it, 3 good reasons to register your trademark.