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Do I have to use the registered trade mark symbol?

There’s no legal requirement to use the registered trade mark symbol next to your trade mark in the course of trade. However, if your trade mark is registered using the registered symbol – ®- can be a helpful way to signal to the public and also to your competitors that your trade mark is protected and that you take your intellectual property rights seriously.

That can in turn have a deterrent effect on would be infringers. If somebody saw your trade mark in use and could immediately see it is registered, perhaps they would be less likely to try to use the same or a similar trade mark in relation to their own goods and services. And that can be particularly helpful if you have a trade mark that you had to file evidence of use to register.

So for example, if you have a mark that perhaps wasn’t entirely distinctive and you had to file evidence with IP Australia proving that your mark had acquired distinctiveness because you’ve used it to such a degree that it’s become distinctive of your goods or services and nobody else’s, in that event that’s the kind of trade mark that you really do want to signal to the world is registered as a trade mark and that you can and will enforce it.

It is important to note that it’s actually an offence to use the registered trade mark symbol in relation to a trade mark that is not registered in Australia. So if your trade mark is not registered, whether it’s completely unregistered or whether you have a pending application, but it’s not registered yet, then you must not use the registered symbol.

What you can do is use the TM symbol next to your trade mark. And that again, can be a helpful way to signal to the public and to your competitors that the mark that you’re using, even if it is not registered, is being used as a trade mark. And that in the future, when you are able to register it, you will enforce it.

I’ve seen people using the R symbol, am I allowed to use it?

Unfortunately we know that there are businesses that use the R symbol alongside unregistered trade marks. This does not mean it’s ok to use it.

We believe there’s a misunderstanding of what the symbols mean. Sometimes we get people filing trade mark applications and they put a logo in and then the logo has a little R symbol on it. And we have to say, no, you’re applying to register it. It’s not registered yet. Until it is registered use the TM symbol instead.

Some people think that it is their intentions to have a registered mark. So if they put the R symbol there that they’re conveying that message, but they don’t understand that it needs to be registered before they can do that.

Another common trap, and we think it’s probably more common, is where products are being sold internationally and the R symbol is applied because the trade mark might be registered in one jurisdiction or even in several jurisdictions. But you need to be careful if you’re sending those products to countries where the trade mark is not registered, because whilst we can’t speak to the laws in other countries, it’s quite possible indeed probable that using R symbol in other countries where your trademark is not registered and will fall afoul of the laws overseas.

And certainly for foreign trademark owners, if you’re selling your goods in Australia and you haven’t registered your trade mark here yet, be very careful that the packaging for those goods doesn’t have the R symbol because you will fall afoul of the Australian trademark law if you do that. Or, where the packaging or labelling does feature an R symbol on goods sold in Australia it is important to ensure that the country of registration is clearly marked. E.g. by saying “registered trade mark in New Zealand”.

Will I get in trouble if I use the R symbol without registering my trade mark?

The Trade Marks Act 1995 as operates in Australia makes it clear that it is an offence to suggesting something to be a registered trade mark when it’s not.

Particularly, Section 151 of the Trade Marks Act provides that a person must not make a representation to the effect that a trademark is a registered trademark, unless the person knows or has a reasonable grounds to believe that the trademark is registered in Australia. The penalty is 60 penalty units. Each penalty unit is worth $222 according to ASIC. Therefore, you could be penalised over $13,000 for falsely claiming something as a registered trade mark.

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