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I’ve been using my brand for years. Why should I register it?

In Australia, it’s possible to have rights in a trade mark that is unregistered simply by virtue of using that trade mark. That is what’s referred to as a common law trade mark. And whilst it’s possible to enforce rights, in other words, to protect a common law trade mark, the cost of doing so and the logistics of doing so are often quite difficult.

When relying on an unregistered trade mark, you have to effectively take action in court to enforce your rights. And you have to not only do that, but you have to prove that you have a reputation in your trade mark. And that reputation may be territorial, so it could be confined to the locations in which you trade.

For some people that might not be too difficult to prove, but for others, it really could be quite an onerous task, if not an impossible one. It would involve a lot of evidence to prove you have a reputation in your brand in the absence of a registered trade mark, and a lot of costs. It’s usually much simpler to enforce rights in your trade mark if you register it.

It’s also a good idea to register your trade mark because that acts as a sign post to third parties, to other traders, that you have rights in your trade mark and that you’re willing to enforce them. Whereas if you don’t register it, if someone were to go to the trade marks register and conduct a search, they wouldn’t find you. And so they might not know that you have enforceable rights. Another reason to register your trade mark is to make sure that you’re on the database so that someone else doesn’t come along and register the same or similar trade mark in relation to your goods and services before you do.

You would still be able to potentially register your trade mark even if someone else came before you on the register, but it wouldn’t be as easy. And you would have to file evidence of your own prior use or concurrent use to overcome such an issue. Not to mention, if someone registers before you then you would need to consider court action to cancel their trade mark. So it’s much simpler if you file to register your trade mark earlier rather than later.

So, if your trade mark is registered, it’s on a public register or database. That is publicly accessible and a third party, or your competitors, who may conduct a search of that register, could find details of your trade mark registration on that public register, which would give them clear notice that you consider your trade mark to be your property, your intellectual property, and that you are willing and able to enforce it.

If you don’t register your trade mark, competitors may not be aware of your business or brand. And so they may not be aware that if they were to adopt similar or even the same trade mark, that they would be infringing your rights. So that in a way, having your trade mark registered not only protects your trade mark but also puts third parties on notice of your rights and your trade mark, because it’s on a public register. Further, registering your trade mark will allow you to use it with the ® symbol, which acts as an immediate deterrent to others; they can see clearly it is a protected brand.

Is it common for people to use trade marks without registering them?

Yes. It is common, often because people are simply unaware that they should register their trade marks. Business operators may think that because they have a company registered or a business name registered that that is sufficient to protect their intellectual property and their trade mark. However, neither company nor business name registration provides an exclusive right to the use of the particular name. Another reason why people might not register a trade mark is because they might think that it’s really only something they would need to do if they thought they needed to stop someone else from using a similar mark. There are further benefits of registering early than simply being allow to take steps against others using similar brands.

For example, if there was something similar on the trade marks register, it can become difficult to register your own trade mark if you didn’t take that step earlier in time. And the costs of overcoming a prior mark on the register are much higher than if you just filed in the first instance. Registering a trade mark gives the owner the right to use that trade mark for the goods or services claimed, so registering also provides the peace of mind that the use of that trade mark cannot infringe another registered trade mark.

I have seen people use the ™ symbol without registering the brand – is that legal?

In Australia, it’s perfectly legal to use the TM symbol alongside anything that you’re using as a trade mark, assuming that the name, logo or other sign is not infringing a third party’s rights. What you can’t do is use the R (®) symbol. So that’s the R in a circle. That’s an indicator that your trade mark is formally registered. You can’t use that unless your trade mark is indeed registered.

The Trade Marks Act 1995 actually prescribes that it is a punishable offence to represent something as a registered trade mark when it’s not, including by using that R symbol. You also need to be mindful that when you use the R symbol, even if your trade mark is registered, you can only use that R symbol in the jurisdictions where your trade mark is registered. So for example, say you’re selling goods – let’s say clothing. You need to be careful if you’re selling clothing about whether you use the R symbol on the clothing itself, or any labels or tags, unless you’re only selling your clothing in the countries where you have a trade mark registration. If you have registration in one country but sell to multiple countries then best practice is to ensure the country of registration is clearly identified.

Do people use that TM symbol against certain unregistered things as a deterrent without actually having registered the trademark?

Some people do it simply because they’ve seen it. There are circumstances in which it’s actually helpful to use the TM symbol, particularly if your trade mark is not very distinctive. If you have a trade mark that is perhaps just slightly descriptive or perhaps a commonplace marketing term, where people might think that you’re just describing the nature of your goods or services or describing the quality of them, then it can be helpful to use the TM symbol to inform the public that you are using that mark as a trade mark and not just as a description or an adjective to talk about the quality. In that scenario it can also be helpful if you want to register your perhaps not totally distinctive trade mark at some point in time.

This is because, when you file a trade mark application it’s examined. One of the grounds for an examiner to object to your trade mark would be that it lacks distinctiveness. It is often possible to still register a trade mark that lacks distinctiveness. You can overcome that kind of objection, but you usually need to provide evidence that you’ve used your trade mark for a period of time in relation to your goods and services such that either it will distinguish them in time or that it actually does.

If you’ve used that TM symbol consistently, and you then file evidence of that use with the office and show that it’s been used consistently over a period of time and that you’ve generated revenue and spent money advertising and promoted that brand, then in that case, it can actually be quite helpful to use that TM symbol. This helps the examiner see, immediately, that you are using the non-distinctive sign as a trade mark to distinguish your goods or services from the similar activities of others.

Generally speaking, there’s nothing wrong with using the TM symbol. It’s just about distinguishing between something that’s being used as a trade mark, or has been held out to the public as being used as a trade mark and an actual registered trademark. There are also times you might see the TM symbol used against a registered trade mark. Some businesses may not update their use of a TM to an R symbol once registered.

From the public’s perspective, it can be a bit confusing because you’re probably looking at it and thinking, “Well, does this person actually own the trademark?” And the answer is that they’re holding out… Anybody who uses a mark as a trade mark, whether or not they use the TM symbol is effectively holding themselves out to the public as the owner of it, whether or not they are. The R symbol is the only way the public can know for certain that the trademark is registered, because if that’s being used incorrectly, then that would actually be illegal. So, you can be fairly sure that if the R symbol is being presented to you, that the trade mark is registered.

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