Trade Mark Symbols and Proper Trade Mark Use

Often people get confused by the presence of the ™ symbol and/or the ® symbol. So what does each mean?

The ™ symbol is often used to claim that you have an interest in the sign or mark as a trade mark or that some trade mark rights are being claimed in the mark. The mark itself may or may not be registered. Anybody can use this symbol. The ™ symbol has no legal effect but it does act as notice to others of your interest in the trade mark. This symbol has become a universal symbol to indicate that the mark is treated as a trade mark.

You do not have to have your trade mark registered by IP Australia to use the ™ symbol. Because of this, the ™ symbol has no real legal significance.

In a practical sense, having the ™ symbol next to your brand does not really provide any additional legal protection and using this symbol next to the particular sign doesn't make the sign a trade mark. The sign itself must still be distinctive and capable of being registered as a trade mark on its own. Often companies use this sign while the trade mark application is being assessed or registered by IP Australia. The sign sometimes acts as a deterrent to others from using the particular sign if they know that your company has claimed some interest in the mark.

Is it compulsory to use the ™ or ® symbols?

It is not compulsory to use these symbols in Australia. We do however recommend that you do use them against your trade mark.

You can only use the ® symbol once you have obtained registration of the trade mark by the Trade Marks Office. It is actually an offence under the Trade Marks Act to use this symbol next to your brand if the mark is not yet registered as a trade mark. It is not a legal requirement to use this symbol even if the trade mark is registered but it does have legal significance if used properly. It is a legal notice to others that the particular sign is registered and that you own or are authorised to use the trade mark.

So in summary:

• ™ symbol means that trade mark rights are being claimed in the mark. The mark itself may or may not be registered.
• ℠ symbol means that the sign or mark is used to promote a service of a business (service mark).
• ® symbol means that the mark is claimed to be a registered trade mark with the Trade Marks Office.

Your right to a trade mark is complete upon registration. The government has authorised the sole ownership over the brand.

What are the benefits of using the ™ or ® symbols?

1. The main benefit is that the symbols inform others that some right to the trade mark is claimed. Whether this right is in the registered trade mark or some unregistered trade mark, it provides notice to others that you have an interest in the mark. When it comes to a potential infringer it would be difficult to argue that they were not aware of your interest or right to the trade mark or that the infringement was "innocent" if the symbols were in place.
2. The symbols have a deterrent effect. Namely that the symbols act as a warning to others that you have an interest in the trade mark.
3. The symbols let people know that the mark (i.e. word or logo) is a trade mark and this helps to distinguish the mark from ordinary (or generic) words.
4. The symbols can be used to inform others that the mark is being used as a trade mark (rather than just as an ordinary English term or descriptive term). The use of the symbols next to the trade mark may become quite useful in proving that you are using the mark as a trade mark with the Trade Marks Office if they raise an objection against the application on the grounds that the mark is generic.
5. Some countries even make it compulsory to use the symbols to prove ownership in the goods.

So when should I use these symbols?

• If the trade mark is not yet registered or is subject of a trade mark application you should use the ™symbol.
• If the trade mark is registered you can use the ® symbol.
• The ™ symbol can be used for either unregistered or registered trade marks.

It is best practice to use the symbols next to the trade mark so that people are aware that the mark referred to is a trade mark, i.e.

ABC Logo™

It is not necessary to always have the symbol showing next to the trade mark. The symbols should ideally be used on the first time the trade mark is used or the most prominent use of the trade mark.

The symbols can be placed anywhere on the packaging of the goods or promotional material. If you do use these symbols it is best to also have a 'Trade Mark Notice' appear on the back of the packaging or inside cover of any advertising material or as a footnote in printed material.

For example:

• The ABC Logo is a registered trade mark of ABC Pty Limited (if the mark is registered as a trade mark); or
• The ABC Logo is a trade mark of ABC Pty Limited; (if the mark is not yet registered as a trade mark) or
• If the packaging or promotional material contains both unregistered and registered trade marks you can do both statements together such as:

"The ABC Logo and the ABC mark are trade marks of ABC Pty Limited".

Using your trade mark correctly

We recommend that you use the trade mark how it is actually registered.

The trade mark should be distinguished from the surrounding text. For example the trade mark should be CAPITALISED or in italics. You can use a different colour or font style to indicate that the mark is a trade mark.

Use the relevant ™ or ® symbols next to the trade mark.

The trade mark should be followed by a description of the product or service i.e.

MICROSOFT computer software products
RED BULL energy drink
PANTENE hair shampoo

The trade mark should not be used as a verb.

The trade mark should not be used in the possessive form.

The trade mark should not be abbreviated.

Risk: If you use your trade mark incorrectly you risk losing its distinctiveness as a trade mark or the trade mark becoming generic for the type of goods or services.

Sometimes if the public use your trade mark as a descriptor it can lose is significance as a trade mark for your business. When this happens it becomes vulnerable to be removed from the Trade Marks Database as a registered trade mark and other people would be free to use the trade mark for their own purpose.

There are many examples of trade mark registrations becoming generic and losing their significance as a trade mark such as, ESCULATOR, KEROSINE, NYLON, TRAMOLINE and LINOLEUM.