At Coleman Greig we regularly receive enquiries and questions regarding trademarks. Unfortunately there appears to be a number of common misconceptions out there regarding trademarks and now might be a good time to address them!
1: A business name is the same as a trade mark
The most common misconception is that a business name is the same as a trade mark. That is not true. Business names and trademarks are different concepts and serve different purposes.
A business name is a name or title under which a person or other legal entity may conduct its business. A Trade Mark is a badge of origin. Under the Trade Marks Act, the term trade mark is defined as a "sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person."
The purpose of a business name is to enable members of the public to see who is responsible for the particular business. Whilst the purpose of a trade mark is to give you exclusive rights to use the trade mark.
You need to be careful that when you select a business name or use a sign as part of your branding that you do not infringe an already registered trade mark.
2: What do I use? R or TM
Some companies are not sure when they should use the "R" symbol and when they should use the "TM" symbol.
You should only use the ® symbol if your trade mark is registered. Illegal use of ® is subject to fine up to $6,000.
If your trade mark is not registered, you could use the TM symbol. This provides notice that you claim a trade mark but it is not necessarily registered.
Some common mistakes businesses make with trademarks...
1: Registration in the wrong class
The first common mistake is to apply for registration in the wrong class. The mark should be registered in the class of goods or services in respect of which you use the trade mark. A registered mark in the wrong class could be useless.
2: Not using the registered mark
The second most common mistake is to not use the mark as registered. If you have a registered trade mark, you always need to use the trade mark in the exact form it is registered. This is particularly important for trademarks that include any logo, stylisation or get-up. A failure to use your registered mark could result in you losing your mark.
3: Using the mark descriptively
The third common mistake is using the word descriptively rather than as a trademark. If you have a registered word mark that is also descriptive, make sure you clearly distinguish your use of the mark from other text. Use a different font or font size or use capitals to clearly indicate that you are using it as a TM and not a description. Make sure you use the ® symbol.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.