Using the Registered Trademark Symbol ®: Part 2

In Part 1 of this three part series, we examined instances of when you can and when you can’t use the ® symbol in relation to trademarks. In this post, we look at a specific instance which can prove to be a trap for the unwary.

Different types of trademarks

As discussed in our article entitled ‘What is a Trademark?’, it’s possible to register a trademark in its basic form as a ‘word’, or in more complicated forms … perhaps as a word in a particular font and with a ‘device’ or a logo.

For example, David Jones Limited has registered a number of different trademarks. It has registered its trading name as a simple word (Registration No. 635879):

‘DAVID JONES’

It has also registered the following as a ‘composite’ trademark (Registration No: 659415):

The first registration gives David Jones Ltd the right to use the word ‘David Jones’ as it is normally written (perhaps in a brochure) while the second registration gives David Jones the right to use the specific logo (i.e. the chequered ‘houndstooth’ pattern arranged in an incomplete rectangle, together with the word ‘David Jones’ written underneath).

Using the ® symbol on different types of trademarks

If David Jones had only registered the first trademark, could it use the ® symbol on the second one? The short answer is ‘no’.

Section 151(2) of the Trade Marks Act 1995 (Cth) provides that:

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

This section could certainly have been worded in ways that would make it less ambiguous. Nevertheless, it would probably have prevented David Jones from using the ® symbol in relation to its logo if it had only registered the word ‘DAVID JONES’. This is because the use of the ® would probably have amounted to a representation that the ‘check houndstooth pattern’ was registered as well.

Of course, this is only a hypothetical question, because David Jones has indeed registered both (and has chosen not to use the ® symbol in many instances).

In Part 3 of this series, we examine how expanding your brand can lead to trouble under section 151 of the Trade Marks Act 1995.