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What is the Difference Between a Trade Mark™ and a Registered Trade Mark®?

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Your brand’s unique identifiers are a simple way to connect with customers and grow your business. If those unique identifiers are copied, it can dilute your brand and damage consumer confidence.

This can be prevented by registering a trade mark with IP Australia. Registered trade marks protect the unique signs that are associated with your brands, products and services.

Trade marks are often accompanied by a ™ or ® symbol. In this article, we’ll discuss the difference between an unregistered Trade Mark™ and a Registered Trade Mark®.

Introduction to Trade Marks

Trade marks protect the unique logos that distinguish your brands, products and services from those of others. They’re a form of intellectual property that helps customers identify your products or services at a glance.

Registration grants you the exclusive right to commercially exploit, licence or sell your trade mark.

A registered trade mark can be comprised of any of the following:

Trade marks are registered in relation to classes of products and/or services. There are 45 classes of goods and services to choose from. You must register a trade mark in relation to the classes that the mark will be used in relation to.

It’s crucial to choose the right classes when applying for a trade mark. Selecting the wrong classes may leave you with a trade mark that doesn’t provide adequate protection, or it may  mean your trade mark could be subject to non-use removal application.

Differences Between Trade Mark™ and Registered Trade Mark®

The ™ symbol can be used by anyone to identify an unregistered trade mark. It provides only common law protection. The ® symbol can only be used alongside a registered trade mark.

The ™ Symbol

The ™ symbol stands for “Trade Mark.” It can be used alongside trade marks that are not registered with IP Australia.

In many cases, businesses use the ™ symbol to indicate that:

It’s common for businesses to apply the ™ symbol as a way to warn others that they intend to claim common law rights in relation to a trade mark. Despite this, the ™ symbol does not indicate any registered legal rights enforceable under the Trade Marks Act. Unregistered trade marks are only enforceable at common law. Enforceability of common law trade marks is much more difficult than with registered trade marks.

The ® Symbol

The ® symbol stands for “Registered Trade Mark.” It can be used alongside a trade mark that is registered with IP Australia. Using the ® symbol indicates to others that the owner of the trade mark has a legal right to use, licence and defend the mark.

There’s no requirement to use either the ™ or ® symbol when displaying your trade marks. Using the appropriate symbol can be an effective way of deterring other businesses from misusing your unique identifiers. Furthermore, using the ™ symbol can be used to accrue distinctiveness for future trade mark applications. 

How to Register a Trade Mark

Registering a trade mark is a relatively straightforward process. You should work with a trade marks attorney when preparing and filing your application. An attorney will ensure your application is successful, and can prevent common issues such as applying for the wrong classes of goods and/or services.

The process is as follows:

1. Determine ownership of the trade mark

Trade marks can be owned by an individual, company, trustee, political body or a government entity. You must determine who owns the trade mark to prevent ownership disputes down the line.

2. Check your eligibility

To be eligible for trade mark protection, the owner must:

  • Live in Australia or New Zealand (or have an agent who resides here), and;
  • Use, or intend to use within three years of filing, the trade mark for the goods and/or services listed in your application

3. Perform an existing trade mark search

Trade marks must not be deceptively similar to earlier trade marks. Your trade mark attorney will perform a search of existing trade marks to ensure your trade mark is sufficiently different from existing trade marks. 

You may need to alter your trade mark if it is substantially similar to an existing trade mark.

Additionally, trade marks cannot be descriptive of the goods.  For example, a trade mark for “APPLE” could not be registered in relation to apples or apple farming, as it is descriptive of the goods.  In contrast, the same trade mark could (and is) registered in relation to electronics (see: Apple iPhone).

4. Gather the required documentation

Your trade mark application needs to be supported by the following documentation:

  • Ownership details
  • A representation of your trade mark (e.g. an image of your logo)
  • The goods and services your trade mark relates to
  • Payment of Government Fees

5. Submit your application

Your attorney can now fill out and lodge an application with IP Australia.

6. Receive your outcome from IP Australia

IP Australia will examine your application and provide an outcome. This process generally takes 3-4 months from the filing date.  

If you need to have your trade mark examined earlier for commercial reasons, it is possible to expedite examination and receive an examination outcome within 1 month.  

If your application is successful, it will be accepted and published for 2 months in the Australian Journal of Trade Marks and the Australian Trade Mark Search.

Anyone can oppose the acceptance of your trade mark during this time. If there is no opposition, or if you overcome any opposition, your trade mark will be registered. Once registered, your trade mark is enforceable against third parties.

If your application is unsuccessful, IP Australia will provide an examination report stating the reasons for rejection. Trade mark applications may be unsuccessful because:

  • The trade mark is not distinct in relation to the goods and services applied for
  • The trade mark is too similar to existing trade marks
  • The trade mark is associated with the wrong classes of goods and/or services

You have 15 months to respond to an examination report and overcome any issues raised by IP Australia. It is possible to extend this time via a request to the Trade Marks Office.

How Long Does Trade Mark Protection Last?

Trade marks can live forever, provided renewal fees are paid. Registering a trade mark in Australia provides 10 years of protection from the filing date. You then need to renew the trade mark by paying a fee.  Once the trade mark is renewed, it will remain registered for another 10 years. 

Why Register Your Trade Mark?

Trade marks are useful to individuals and businesses of all sizes. Registering your unique identifiers as trade marks helps to create value within your business and can prevent imitators from damaging your brand, or starting deceptively similar brands.

We recommend registering eligible trade marks for the following reasons:

1. Turn your branding into a business asset

Trade marks can be sold and licenced to others.

Licensing trade marks is a common stream of revenue for many businesses. It can also help a company grow, especially when entering new markets.

You may wish to sell a trade mark if a brand, product or service is being discontinued, or if a business is being sold. Registering a trade mark allows you to assign a monetary value to your unique branding during the sale process.

2. Exclusive right to use, sell and licence your trade marks

The owner of a registered trade mark has the exclusive right to use, sell and licence the mark. This provides excellent control over your brand, which is useful for marketing and to increase brand recognition.

3. Prevent others from registering similar trade marks

IP Australia maintains a database of registered trade marks. This prevents others from registering a trade mark that is identical or deceptively similar to yours in relation to similar goods and services.

4. Protection against unauthorised use

Registering a trade mark grants you the right to prevent others from infringing your trade mark. In practice, this allows you to stop other parties (such as competitors or third-party manufacturers) from using your trade mark without permission, and recover financial damages (including accounts of profit) relating to trade mark infringement.

When Do You Need an Attorney for Trade Marks?

Your business’ trade marks represent substantial value. For that reason, it’s crucial that trade marks are correctly registered and maintained.

We recommend engaging an attorney for all matters relating to trade marks, including:

  • Searching existing trade marks (both registered and unregistered)
  • Preparing an application for a new trade mark
  • Responding to an examination report from IP Australia
  • Responding to an opposition
  • Renewing trade marks
  • Licensing or selling a trade mark
  • Infringement proceedings

Trade marks attorneys have an intimate understanding of intellectual property legislation. This is invaluable in protecting your IP and maximising its value.

Working with a trade marks attorney also ensures your IP is secure and is renewed on time, every time. Incorrectly filing trade mark applications or allowing trade marks to lapse can cause substantial losses, so it’s worth engaging a trade marks attorney to stay on top of your IP portfolio.

It is also necessary to engage an attorney if you are seeking to file your trade mark overseas.

Choose the Right Protection for Your Intellectual Property with Kings!

Protecting your intellectual property is one of the most important things you can do. Trade marks allow you to maximise unique branding, which represents substantial value as you grow your business.

The intellectual property attorneys at Kings are experts in trade marks, design rights and patents. We understand the value of your trade marks, so we can ensure your branding receives the protection it needs.

Our attorneys support you throughout the trade mark process. We provide assistance with trade mark clearance searches, preparing and filing applications, responding to objections raised by the Trade Marks Office and managing your IP strategy.

We can also help you with obtaining trade marks in overseas jurisdictions, which is strongly recommended if you intend to manufacture or sell your products or services internationally.

Book a confidential consultation with our team to learn more about registering a trade mark in Australia!

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