Using the Registered Trademark Symbol ®: Part 1

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In this three-part series of articles, we examine issues which commonly arise around the use of the registered ® symbol. This article gives an overview of when you’re allowed to use the symbol, and when you're not. The later articles go deeper into some of the technicalities.

The right to use the ® symbol

Once you’ve registered a trademark, you’ll generally have the right to display the ® symbol next to it. This puts people on notice that they cannot use any mark that is ‘substantially identical’, or ‘deceptively similar’ to your own.

Some trademark owners choose to take advantage of this right, while others don’t.

Offences regarding the use of the ® symbol

Section 151(1) of the Trade Marks Act 1995 (Cth) provides that:

‘A person must not make a representation to the effect that a trade mark is a registered trade mark unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia.’

Breaching this section can incur a fine of up to 60 penalty units, which (as of December 2009) is equal to $6,600.

This means that you must not use the ® symbol in relation to your mark (or otherwise claim that your mark is registered) unless it is shown as being registered in IP Australia’s trademark database (ATMOSS).

Some things to be careful about:

Trademark owners can fall foul of section 151 in a number of ways. Some of the more common reasons behind breaches are:

  • using the ® symbol as soon as you’ve lodged a trademark application;
  • using the ® symbol as soon as the trademark has been accepted for registration (you must wait for the 2 month advertising period to expire and for your trademark status to be updated to ‘registered’);
  • using the ® symbol after the trademark has expired (i.e. this occurs after 10 years if you haven’t paid your renewal fees);
  • when you’ve registered a different trademark from the one you’re using (discussed in Part 2);
  • when you’ve registered your trademark in relation to different goods or services from the one that you’re currently promoting (discussed in Part 3);
  • using the ® symbol after your trademark has been removed from the register for some reason.

In Part 2 and Part 3 of this series, we discuss a couple of traps for the unwary.

Trade Marks & BrandingDavid KweiTrademark Protection