Registering your trademark and the registered trademark symbol ®
Registering your trademark is an important step in protecting your intellectual property rights. Registration not only allows you, the trademark owner, to display the registered trademark symbol ® next to your trademark, but also provides you with benefits far greater than those available to unregistered trademark owners.
When can I use the registered trademark symbol ® and what does it mean?
The registered trademark symbol ® can only be used for registered trademarks. The symbol notifies and prompts others to respect your rights to the trademark, potentially more so than if the trademark was unregistered. Using the registered trademark symbol ® on an unregistered trademark is an offence under section 151(1) of the Trade Marks Act 1995 (Cth). The offender may be fined up to 60 penalty units, which is currently up to $12,600 (Crimes Act 1914 (Cth) s4AA(1), Crimes Amendment (Penalty Unit) Act 2017 (Cth) s1).
Where an owner of an overseas registered trademark wishes to use their trademark in Australia, they may use the registered trademark symbol ® provided the country of registration is displayed close to the symbol (Trade Marks Act 1995 (Cth) s151(5). For example, if the mark ‘rocking runners’ is a registered trademark in Japan that is used to describe a brand of sneakers, then the trademark owner would be able to use this trademark in Australia, provided they displayed the country of origin (Japan) close to the registered trademark symbol ®.
Another symbol commonly used in relation to trademarks is the trademark symbol TM. This symbol is used to indicate to other traders that you’re claiming use of particular wording or design as a trademark. In Australia, use of this symbol does not have to be in relation to a registered trademark in Australia. The trademark symbol TM can be used to better evidence common law rights to a trademark, prior to registration because it is a statement to the public that a particular word or sign is being used as a trademark. However, it is important to consider registering your trademark, as even unregistered trademarks that apply the trademark symbol TM do not attract “registered, intellectual property…protection” (IP Australia, Benefits of trade marks, 17 March 2017).
How do I go about registering my trademark?
If you are the owner of the mark, you may apply to have it registered as a trademark (Trade Marks Act 1995 (Cth) s 27(1)). You may apply for a registered trademark if you;
- have used the trademark within Australia before anyone else;
- have applied for registration before anyone else, and;
- have created the trademark with the intention to use it.
It is important to note that some marks cannot be registered. These include:
- those that have the names of cities or towns as their trademark (s39);
- those that cannot be described in writing and/or drawings (s40);
- marks that, if registered, would violate another law (such as copyright) (s42(b)), and;
- marks that are substantially identical or deceptively similar to other trademarks (s44).
Provided your trademark does not contravene any grounds for refusal, your trademark registration is likely to be approved.
What are the benefits to registering your trademark?
There are many benefits that come with registering your trademark, including:
Ownership: Once you have obtained a registered trademark, you are able to exclusively use the trademark in the class/classes of goods or services to which it is registered. You are also able to license and assign your trademark to other people.
Gift: If you wish, you may make your registered trademark a gift in your will.
Protection offered Australia-wide: Where a registered trademark owner believes their trademark has been infringed, they are not required to prove the element of ‘business reputation’ Australia-wide. This is due to the fact that trademark registration operates across Australia. However, where an infringement of an unregistered trademark has potentially occurred, the trademark user will need to prove its ‘business reputation’ for each region in Australia that he or she wishes to cease further infringement in. Registering your trademark is important, as proving ‘business reputation’ can be difficult in some instances.
Expense: Registering your trademark may be initially more expensive than it would be to simply use an unregistered trademark. However, protecting an unregistered trademark can be more challenging and more expensive in the future.
Sale: A registered trademark is capable of being sold, as it is an asset.
Penalties for improper use of the registered trademark symbol ®: Although there are no penalties for the improper use of the trademark symbol TM (which is used for both registered and unregistered trademarks), it is an offence to use the ® symbol on an unregistered trademark. As the ® symbol may deter trademark infringement, it is wise to register your trademark if you wish to alert others to your trademark rights.