4 Mistakes to Avoid When Using Trade Mark Symbols
When it comes to protecting your trade marks, using the appropriate trade mark symbol is important. By using the appropriate trade mark symbol, you are essentially notifying others that you are claiming your unique sign as a trade mark. However, many business owners are unaware of the potential issues that can arise if they misuse the registered trade mark symbol. To avoid this, this article outlines four mistakes to avoid when using trade mark symbols.
1. Using the ‘®’ Symbol Without Registering
One of the benefits of registering your trade mark with IP Australia is using the registered trade mark symbol (‘®’). This informs others that Australian trade mark law protects your intellectual property rights.
However, using the registered trade mark symbol without actually registering your trade mark is an offence under the Trade Marks Act. You can be liable to pay a fine of up to $6600 if you use the registered trade mark symbol concerning a sign that you have not registered.
The same rule applies if your application is pending. Even if you file an application with IP Australia, but they have not registered your trade mark, you must not use the ‘®’ symbol. However, you can use the trade mark symbol ‘™’. In fact, many business owners use the ‘™’ symbol whilst IP Australia is in the process of reviewing their trade mark application.
2. Misusing the ‘™’ and ‘®’ Symbol
Whilst it is easy to misunderstand the difference between the two symbols, using the wrong one can have negative implications. To clarify the difference, anyone can use the ™ symbol if they intend to claim a trade mark. This applies to business owners who:
- wish to assert their rights over their unregistered trade mark;
- are in the process of applying to register their trade mark with IP Australia; or
- own a registered trade mark, even though you are more likely to use the registered trade mark symbol in this instance.
On the other hand, you can only use the registered trade mark symbol if you own a registered trade mark.
Regardless of which symbol you use, there is no legal requirement to display the symbol in any particular position. However, you should display the symbol in an area that the public can clearly see. Typically, trade mark owners will place the symbol on the upper right-hand of their trade mark.
3. Misunderstanding Trade Mark Protection
Merely displaying your trade mark symbol with your sign will not necessarily prevent others from copying or misusing your trade mark. After all, people can infringe on your intellectual property despite being aware that you own a registered trade mark.
For this reason, you must ensure that you take additional measures to enforce your rights concerning your trade mark. This might mean that you scan the marketplace for any potential infringements and your exclusive rights to your registered trade mark if you think there has been a likely infringement.
Trade mark infringement occurs when a trader uses a sign that is substantially identical with, or deceptively similar to, a registered trade mark concerning the same or similar goods and services. For example, a shoe manufacturer operating under the name ‘Nikee’ would likely be infringing on the rights held by Nike.
Alternatively, if you are claiming your rights to an unregistered trade mark, you might consider:
- pursuing a claim for passing off if someone has passed off their goods and services as yours; and/or
- bringing a claim under Australian Consumer Law if someone has engaged in misleading or deceptive conduct.
In any event, you should seek legal advice if you believe that someone has infringed on your intellectual property rights.
4. Using Your Trade Mark for Goods and Services That Are Not in Your Application
When you apply for trade mark registration, you must specify what goods and services you wish your trade mark to protect. Consequently, you should only use the reserved symbol concerning the classes that IP Australia has approved.
For example, say your business provides cleaning services and sells hardware materials. However, you only registered your trade mark in connection with your cleaning services. As a consequence, you should only use the registered trade mark symbol concerning the services.
Alternatively, if your registered trade mark cannot protect your business’ goods and services, you might consider applying for a new registration.
When it comes to using the trade mark symbols, you should ensure that you:
- only use the ‘®’ symbol if you have a registered trade mark;
- use the ‘™’ symbol if you are claiming an unregistered trade mark or IP Australia is in the process of reviewing your application;
- monitor the market for potential infringement; and
- only use your trade mark for goods and services in your registration.
Frequently Asked Questions
In order to generally prove that someone has passed off as your business, you must be able to show that:
• your unregistered trade mark has established a strong reputation in the market;
• the wrongdoer has made a misrepresentation; and
• you have suffered or are likely to suffer damage because of that misrepresentation.
The law protects registered trade marks for 10 years from their filing date, which you can renew 12 months before their expiry. However, there is no limit on the number of times you can renew your registration.