Is Trademark Registration Necessary?

In one form or another, “do I have to register my trademark” is usually one of the first questions that someone embarking on the journey to trademark registration will ask.

The simplest – and maybe simplistic – answer to this question would be “You don’t have to, but you should”. Here’s why, in less simplistic terms.

You can use a trademark without registering it

Generally speaking, it is not necessary for a trademark to be registered in order for someone to use it.

As a matter of fact, in some countries such as the USA or Canada, it is quite the opposite: it is necessary for the trademark to be in use to obtain the registration.

There are some exceptions, as in some countries, specific products – most commonly pharmaceuticals - cannot be commercialized without a registered trademark.

In other countries, customs can require a trademark certificate in order to let products cross the border, whether it is for export or import. In China, for instance, customs will often retain products if another company has registered the trademark. For companies manufacturing their products in China, this can lead to a shortage of product and devastating losses.

Why should I register my trademark?

If registration is not compulsory, then why is it so important to register a trademark? What will happen if you don’t?

To explain the importance of trademark registration, we must first understand the difference between two types of countries: the so-called “first-to-use” and “first-to-file” countries.

Broadly speaking, the difference is very simple.

Countries usually labelled “first-to-use” are those in which the rights to a trademark are granted to the first person or entity who uses the trademark in that country. They are sometimes also called “common law” countries.

“First-to-file” countries are those in which the rights to a trademark are granted to the first person or entity to officially file for registration with the institution in charge of registering trademarks.

First-to-file countries

In first-to-file countries, for instance Spain, Argentina, China, Japan or Egypt to name but a few, trademark registration is absolutely critical.

Imagine using a trademark for years in a country while neglecting to register it – or letting it lapse.  If a third-party realized this and filed an application for the same trademark, they could force you to stop using your own trademark – or extort substantial amounts of cash from you in order to sell your own trademark back to you.

There are a few legal actions that can be taken against such people, for instance cancellation actions for bad faith, but such proceedings are usually very costly, time-consuming, and require you to provide substantial evidence that you are the rightful owner of the trademark. The outcome of those actions is often dubious, and needless to say, the damage inflicted on your business while awaiting the results can be massive.

Even without considering deliberate fraud, anyone could easily file for registration of a trademark that is confusingly similar to yours, without being aware of the existence of your trademark. Having secured registration of their trademark, they would then be able to prevent you from using yours if they felt it was conflictive.

These are broad strokes, and there are some exceptions to the first-to-file use, mostly for what is generally referred to as “well-known” or “notorious” trademarks. If Coca-Cola had neglected to register their trademark in Spain (not a very likely scenario, is it?), that doesn’t mean you would be able to register it; your trademark application would certainly be denied based on the brand’s established notoriety. However, most companies cannot count on their trademark’s notoriety to preserve their rights.

Therefore, in first-to-file countries, duly registering and carefully maintaining your trademark portfolio is absolutely necessary as any lapse could be disastrous.

First-to-use countries

Since in first-to-use countries the rights to a trademark go to the first to use it in a specific territory, does this mean that trademark registration is not necessary in those countries?

While it is not as crucial to register your trademark in first-to-use countries as it is in first-to-file ones, it is still highly advisable and can save you a great deal of money and headaches down the line.

In those countries, although it does not grant absolute rights to a trademark, registration offers presumption of ownership. If your trademark is registered, you are assumed to be its rightful owner; if anyone contested this fact, the burden of proof would be on them to demonstrate that they are in fact the rightful owners.

Therefore, if you use your trademark in a first-to-use country, such as the USA, Hong Kong or the United Arab Emirates, but fail to register it, and someone else files an application for it, you should be able to prevent it from registering (or cancel the registration if already registered) by demonstrating prior use of the trademark in that jurisdiction. However, this would be a costly and long process, which is best prevented by registering in the first place.

Additionally, even in countries where rights are granted to the first user, you will be required to have at least an application for registration in order to take legal action against a third-party who you feel is infringing on your rights.

Prioritize your Registrations

Although we highly recommend registering your trademark everywhere you use it, if your budget does not allow it, you should give priority to registering in first-to-file countries.

If you have doubts about whether a country you are interested in is first-to-file or first-to-use, do not hesitate to contact one of our Trademark Consultants!

Other Benefits of Trademark Registration

Beyond ensuring that you can use a specific trademark and helping you to prevent others from using it, there are some additional benefits to registration. Check some of the articles from our blog to discover a few of them:

• A registered trademark can be a valuable asset for a company. 
• Amazon gives owners of registered trademarks some privileges
• It can be of help in cases of cybersquatting and can also be necessary to buy domain names for certain extensions
• It can help you prevent your trademark from being used in your competitors’ Google ads.
• It allows you to use the ® symbol.

iGERENT offers registration services in more than 180 jurisdictions. Do not hesitate to request a quote from one of our Consultants!