TM vs ® Symbol in Australia: What's the Difference?

What do the ™ and ® symbols mean in Australia?

In Australia, these symbols provide a clear, visual indicator of a business's claim to a particular brand element. However, they do so from different legal standpoints:

• ™ (TM symbol): This symbol stands for "Trade Mark." Its use indicates that you are claiming a word, logo, tagline, sound, scent, shape, or other distinctive sign as your trademark, but it does not necessarily mean that the mark is formally registered with IP Australia. You can use the ™ symbol for any mark you consider to be your trade mark, whether you have applied for registration, are preparing to apply, or simply intend to rely on common law rights.
• ® (R symbol): This symbol stands for "Registered Trade Mark." Its use signifies that the mark has been officially registered with IP Australia under the Trade Marks Act 1995 (Cth). Registration confers significant legal advantages and exclusive rights to use the mark throughout Australia for the goods and/or services for which it is registered.

The ™ symbol: Claiming your unregistered mark

The Australian legal system recognises unregistered trademarks through common law principles, primarily the tort of passing off. This means that even without formal registration, you may have some rights to prevent others from using a similar mark if their use misleads consumers into believing there is an association between your businesses, thereby damaging your goodwill.

When to use the ™ symbol

You can legitimately use the ™ symbol in Australia in a variety of scenarios:

• Before registration: If you have recently started using a new brand name, logo, or slogan and intend to apply for trade mark registration, using ™ signals your claim.
• During the application process: While your trade mark application is pending with IP Australia, you should continue to use the ™ symbol. Once registered, you can switch to ®.
• For unregistered marks: You might choose not to register certain marks, especially if their commercial significance is limited or if they are descriptive. Using ™ in these instances can still put competitors on notice that you consider it your proprietary branding.
• For marks that are not registrable: Sometimes, a mark may not meet the registrability requirements under the Trade Marks Act 1995 (Cth) but still serves as a distinctive brand element that you wish to claim.

Legal effect of using ™

Using the ™ symbol primarily serves a notice function. It informs the public and potential competitors that you consider the sign to be your trade mark and intend to protect your proprietary rights in it. While it does not automatically grant you the same statutory exclusive rights as a registered trade mark, its consistent use can help to:

• Deter potential infringers by signalling your proactive stance on brand protection.
• Strengthen your position in any common law "passing off" claim by demonstrating your consistent assertion of ownership and your intent to protect your brand's goodwill.
• Show evidence of continuous use, which can be relevant in certain trade mark disputes or if you later seek to register the mark.

It's important to understand that using ™ does not provide the robust, statutory protections afforded by registration. Enforcement of an unregistered trade mark typically requires proving goodwill, misrepresentation, and damages, which can be a complex and costly legal exercise. For comprehensive brand protection strategy, consider speaking with our intellectual property lawyers.

The ® symbol: The power of registration

The ® symbol denotes a registered trade mark and carries significant legal weight in Australia. Registration with IP Australia grants the owner a bundle of exclusive rights and powerful enforcement mechanisms.

When to use the ® symbol

You may only use the ® symbol once your trade mark is officially registered on the Australian Register of Trade Marks. This means that IP Australia has examined your application, found it complies with the requirements of the Trade Marks Act 1995 (Cth), and issued a certificate of registration.

Legal effect and benefits of using ®

Using the ® symbol signals to the world that your brand is legally protected. The primary benefits associated with a registered trade mark include:

• Exclusive rights: Under section 20 of the Trade Marks Act 1995 (Cth), the owner of a registered trade mark has the exclusive right to use, and to authorise other persons to use, the trade mark in relation to the goods and/or services for which it is registered. This right is nationwide.
• Stronger enforcement: If someone infringes your registered trade mark, you have a statutory right to sue for infringement. You do not need to prove goodwill, misrepresentation, or damages – only that the other party used a substantially identical or deceptively similar mark in relation to similar goods or services, without your authorisation. This makes enforcement significantly easier and more cost-effective than relying on common law passing off claims.
• Public notice: The ® symbol serves as a clear warning to potential infringers, indicating that your mark is protected by law and that you are serious about enforcing your rights.
• Deterrent: Competitors are less likely to attempt to use a similar mark if they see it is registered, reducing the likelihood of future disputes.
• Asset value: A registered trade mark is a valuable business asset that can be licensed, assigned, or used as security. The ® symbol enhances its perceived value.

Penalties for misuse of ®

It is against the law to falsely represent that a trade mark is registered. Section 151 of the Trade Marks Act 1995 (Cth) states:

A person must not falsely represent that a mark is registered as a trade mark. Penalty: 30 penalty units.

As of 2024, a single penalty unit is $313. This means that a person found guilty of falsely using the ® symbol could face a fine of up to $9,390. This provision underscores the importance of only using the ® symbol when your trade mark is definitively registered with IP Australia for the specific goods and services on which it is used.

Practical guidelines for using ™ and ®

To ensure proper and lawful use of these symbols, consider the following practical rules:

1. Use ™ for unregistered marks and pending applications: Whenever you are claiming a brand element as your trade mark but it has not yet reached the Australian Register of Trade Marks, use ™. This includes new brand launches, marks for which you are actively preparing an application, or those currently undergoing the examination process with IP Australia.
2. Switch to ® only once registered: As soon as you receive confirmation of registration from IP Australia, update your branding and marketing materials to reflect the ® symbol. This applies to your website, product packaging, advertising, social media, and any other public-facing materials.
3. Jurisdictional limitation of ®: A trade mark registered in Australia only grants exclusive rights within Australia. If you operate internationally, do not use the ® symbol on products or services marketed or sold in countries where your mark is not registered. In those jurisdictions, you should revert to using the ™ symbol or no symbol at all, depending on local advice.
4. Be precise about goods/services: A trade mark is registered for specific goods and/or services. If your registered mark is for "clothing" (Class 25) but you also use similar branding for "online retail services" (Class 35) that are not yet registered, you should use ® for "clothing" and ™ for "online retail services," or clearly associate the ® with the registered goods.
5. Audit your branding: Regularly review your branding and marketing collateral to ensure the correct symbols are being used alongside your trade marks, especially as their registration status evolves.

Properly managing your trade marks and correctly using the ™ and ® symbols is a key part of an effective intellectual property strategy. It protects your brand, asserts your rights, and ensures compliance with Australian law.

This article contains general information only and does not constitute legal advice. Envision Legal accepts no liability for any loss arising from reliance on this content. You should seek independent legal advice tailored to your specific circumstances. For enquiries, contact Envision Legal.