Using the Registered Trademark Symbol ®: Part 3
In Part 1 and Part 2 of this series, we looked at the use of the ® symbol, and pointed out some of the main ways in which people use it incorrectly. In this final part, we look at one final way in which the Trade Marks Act can be breached unwittingly.
A trademark registration gives you the sole right to use a particular trademark in relation to specific goods or services. These goods or services are identified in the certificate of registration and recorded in the Trademarks Register which is kept by IP Australia.
To take one trademark as an example, in 1996 the company controlled by the (then) up and coming Australian Designer, Collette Dinnigan, applied to register the words ‘COLLETTE DINNIGAN’ as words in Class 25. The trademark was granted for the use of that mark in relation to ‘Articles of clothing including footwear and headgear’. Upon registration, the owner of the trademark was able to use the ® symbol next to the trademark when it was used to promote clothing and footwear etc.
Subsequently, after her business took off and her brand became widely known, it was decided to expand into additional product lines. The earlier registration was not valid to protect use of the trademark in relation to non-clothing related products.
Therefore, in 2001, a trademark application was filed (Registration No. 887186) to register the words ‘COLLETTE DINNIGAN’ in relation to a whole host of products, including perfume (Class 3), jewellery (Class 14), leather goods (Class 18) and furniture (Class 20).
A common mistake avoided
The Collette Dinnigan trademark is a good example of how to protect your brand as it grows. Many companies forget to register the trademark in relation to new goods and services as they expand their offerings. This means that they are (in effect) trading with unregistered trademarks in relation to the new goods and services.
Further, if the trademark or logo is replicated without thought, any use of the ® symbol for the new goods and services will also breach section 151(3) of the Trade Marks Act 1995 (Cth), which provides that:
‘A person must not make a representation to the effect that a trade mark is registered in respect of goods or services unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia in respect of those goods or services.’
Contravening this section can result in a fine of up to $6,600.
As discussed in this series of articles, it’s essential that you think carefully before applying the registered trademark symbol to your trademarks if you are to avoid contravening the Trade Marks Act 1995.