Unregistered Trademarks & Prior Use

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According to the World Intellectual Property Organisation (WIPO), “Intellectual capital is recognized as the most important asset of many of the world’s largest and most powerful companies; it is the foundation for the market dominance and continuing profitability of leading corporations.”

Not for profit organisations that deliver services in increasingly competitive environments also understand the value of their intellectual property and the need to protect it. One of the fundamental mechanisms for doing so is registration of trademarks. However, it is rarely a straightforward process.

A common problem that arises when applying to register a trademark is that the proposed trademark is not sufficiently unique to distinguish the applicant’s goods or services from those of other traders and service providers.

This can occur where the trademark uses common or generic words and/or names. The difficulty with the registration of this type of trademark is that it would allow one business to prevent others from using common words or phrases in promoting their goods or services.  However, even trademarks that use common words can be distinct and valuable.

By way of example, a care provider has created a model for delivering home care which it calls the ‘CareWell Program’. The organisation has spent a long time developing its care model, and has now been delivering it for over five years. Given the success of its care model, the organisation has decided it is time to apply for a trademark for the “CareWell Program” name.

Such a trademark is likely to be refused registration on the basis that it is not capable of distinguishing the organisation’s services from the services of other care providers. Other care providers should be allowed to use the words ‘care’ and ‘well’ which are common everyday words that would be used by a large number of providers in describing their care services.

This difficulty may, however, be overcome given the extensive prior use of the “CareWell Program” name over the past five years. The service provider should be able to submit evidence detailing its prior use of the name to establish that because of this use:

  1. consumers associate the name with its services; and
  2. the name can therefore be used to distinguish its services from those of other providers.

Regardless of whether the name used is clever, unique or special a name might be, it should be protected to the fullest extent possible.

For more information on trademark registration, please contact us.


Matthew Cartwright

Matthew first joined CRH Law as a law clerk in 2014, providing legal, administrative and research assistance to the firm while completing his legal studies. During his time as a law clerk, Matthew has gained experience in the areas of law practised at CRH Law, and has had many opportunities to provide assistance to the clients of the firm.