Marking Your Goods - Trade Marks

This article first appeared in The Watermark Journal Vol 23 No 1 (March 2006) 

One of a company’s most valuable assets may be its trade marks. They provide a means of access to the marketplace and are the instrument by which customers and competitors identify goods and services.

Marking
As a means of protecting these valuable assets, there are a number of ways in which trade marks should be used to distinguish them from other textual material in advertising and labeling. The purpose of this article is to outline how marking is used in Australia to best protect the trade mark owner’s rights.

Marking in Australia
In Australia, there is no prescribed manner of indicating that rights are being claimed in a trade mark.

The symbol TM is popularly used and has advantages over ® and words such as “Registered” or “Registered Australian Trade Mark”, particularly where space is at a premium.

The symbol TM is generally accepted to mean that rights are being claimed in the trade mark – whether those rights exist at common law in respect of unregistered trade marks, or by way of statutory protection through registration under the Trade Marks Act 1995. This notice remains a fact in respect of trade marks for which no statutory protection has been sought, whilst any application for registration made under the Trade Marks Act remains pending, and even when the trade mark becomes registered.

The use of ® is generally accepted to refer to trade marks for which statutory protection by way of registration under the Trade Marks Act has actually been achieved and that the registration remains in force. The symbol ® should not be used in respect of pending applications for registration or in circumstances where no registration has been sought.

As indicated above, the notice TM always remains a fact and need not be changed to ® when a trade mark becomes registered. This is advantageous in situations where the trade mark is embossed or otherwise included in the product itself and avoids expensive changes to dies or other instruments of production.

Offences
It is an offence under the Trade Marks Act 1995 to intentionally or recklessly represent that your trade mark is registered when it is not.