Use of the ? Symbol for Trade Marks

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 you use the ? symbol on a Trade Mark

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 ‘Snow Storm’ is a registered trademark in Japan that is used to describe a brand of snow gear, 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”.

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.

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. It is important to understand there is now such thing as a world wide trade mark or patent. Each country and jurisdiction has its own IP laws and an application for registration must be made in each country you operate or through the Madrid Protocol.

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. An example of this is the cafe of MCCORMICK & COMPANY INC V MCCORMICK [2000] FCA 1335 where the applicant Mary McCormick sought to register her mark “MCCORMICK’S”?and?“MCCORMICK’S INSTANT BATTER SIMPLY ADD WATER”.?The application initially covered all goods in class 30. Whilst Mary could prove prior use she was met with strong opposition from MCCORMICK & COMPANY, a large multinational.

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.

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.

Basic Steps in Trade Mark Registration:

• Step 1) Undertake a thorough search of google, social media and via IP Australia Trade Mark Search Tool. You will want to take into account single words, a combination of words and any visual symbols you may use in the trade mark.
• Step 2) Consider what classes of goods and services your trade mark will need protection for example a jeweller would file a trade mark in Class 14 - Jewellery and imitation jewellery, precious stones, watches, clocks and stopwatches. A tip is to not go overboard and file for classes of goods and services you wont use, as this places your trade mark at risk for non use and could result in a competitor seeking to remove your mark from the register or claim ownership.
• Step 3) File your trade mark application with IP Australia, whilst this can be done directly I suggest using a trade mark attorney to make sure your application and searches have been perfected and well prepared against any possible opposition. 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.

• Step 4) Await the examination process, An examiner at IP Australia will undertake an examination of the trade mark and ensure that there are no conflicting marks on the trade marks register. Once this has been completed and no adverse finding are discovered your mark will proceed to acceptance in which it is advertised in the the Australian Official Journal of Trade Marks and will remain in an opposition period of 2 months where the trade mark can be opposed.
• Step 5) Once the opposition period expires your Trade Mark proceeds to registration where you can use the ? symbol on your trade mark.

Common Mistakes regrading Trade Marks

• Assuming that registering your business name gives you exclusive rights to it If you run a business in Australia and don't trade under your own name, you'll need to register your business name with the?Australian Securities and Investments Commission (ASIC). However, this won't stop others from using your business name. If you want exclusive rights to your business name, you need a trade mark.
• Thinking that registering a website domain gives you exclusive rights to that name When you register a domain name, you secure an internet address (website URL) for customers to visit. This doesn't stop others from using your business name. For example, Ben's business, Threads & Treads, sells t-shirts and sneakers. He registers the domain name: www.threadsandtreads.com.?To stop others from using his business name, Ben needs to apply for a trade mark.

Should you have any questions relating trade marks or intellectual property trade mark merchandising feel free to reach out as I can provide advice and guidance on Trade Marks being a registered Trade Mark Attorney with the Trans-Tasman Intellectual Property Attorneys Board.