©, ®, ™, Patent Pending: POF’s Q&A about product marketing

1. Do I have to put any of these markings on my products, packaging or website?

Not if you don’t want to. Product marking is not compulsory in Australia, and intellectual property owners are not legally penalised (as they are, for example, in the United States in relation to damages) if they do not do so. However, there are legal and practical benefits of product marking.

Firstly, a statement that you own intellectual property rights may discourage a potential competitor from copying your product or otherwise infringing your rights. Secondly, an IP rights statement can usually prevent an infringer from arguing that it did not know that it was infringing your rights, which can be relevant to a court’s decision about the remedies it will grant you.

2. What is the best form of copyright statement?

Copyright statements should be in the form: © The Great Australian Widget Company Pty Ltd (ACN 91 123 456 789), first published Australia 2013.

If The Great Australian Widget Company wanted to sue someone for copying a substantial part of its copyright work, it would normally have to prove it owns copyright by proving where, when and by whom the work was created, and how the author’s rights came to be owned by The Great Australian Widget Company. However, if the copyright statement appears on the work, the litigation would proceed on the basis that The Great Australian Widget Company owned the copyright, unless the infringer could prove that any of the statements made in the copyright statement were false. They had better not be false, as it is an offence to make a false copyright statement.

3. What is the difference between ™and ®?

® is limited to registered trade marks. It is an offence to use it in Australia in relation to anything other than a registered Australian trade mark. The fact that the goods have been imported from a country where the trade mark is registered is no excuse, if the trade mark is not registered in Australia. TM can be used on registered and unregistered trade marks, including trade marks for which an Australian trade mark application has been made, but which has not been granted.

4. What does ‘Patent Pending’ mean?

It means that a patent has been applied for but not yet granted. If the patent in question is a standard Australian patent, once it is granted, the patent owner gets the right to sue for use or sale of the patented product or method back to the date the patent application was published. This is usually 18 months after the date the patent application was filed. Publication may be many years before the date the patent is granted, particularly if someone has opposed the grant of the patent unsuccessfully.

Using ‘Patent Pending’ on a product sold in Australia if an Australian patent has not been applied for, is likely to be considered misleading and deceptive conduct. It would also contravene the Australian Consumer Law.

5. What should I put on my product when a patent is granted?

If you have a standard patent, ‘Patented in Australia’ is enough, although you might like to add the company name, ACN and the patent number. If your patent is an uncertified innovation patent, we recommend that you do include the patent number. This is because until an innovation patent is examined and certified, the owner of the patent has IP symbolsno right to prevent anyone from using the invention. If the owner did not provide sufficient information to allow someone viewing the product to identify the patent as an uncertified innovation patent, just using the words “made under licence of an Australian Patent”, could be misleading or deceptive. In addition, it could contravene the Australian Consumer Law, by implying that using the invention infringes a patent, which it does not yet do. Your statement could read ‘Covered by Australian Patent Number 123456789.

6. I have licensed another company to make my patented product and to use my registered Australian trade mark THE GREAT AUSTRALIAN WIDGET on it. What statement should I tell the company to put on the box?

We recommend ‘This patented product is made, and the GREAT AUSTRALIAN WIDGET ®trade mark is used, under licence from The Great Australian Widget Co. Pty Ltd ACN 91 123 456 789’. For an uncertified innovation patent, we recommend, ‘This product, which is covered by Australian Patent Number 123456789, is made, and the GREAT AUSTRALIAN WIDGET ®trade mark is used, under licence from The Great Australian Widget Co. Pty Ltd, ACN 91 123 456 789.

7. Can I include a copyright statement on my product if it has been made in accordance with a design created by my employees?

This is a tricky area. In general, there is no copyright in a product itself, as opposed to an artistic work appearing on the surface of the product. The exception being if the product is a “work of artistic craftsmanship, which is not mass produced”. There is also copyright in design drawings of a product. However, it is not an infringement of copyright in design drawings to make the product itself, once the owner of the copyright in the design drawings has made and sold the product in industrial quantities (usually 50 or more). For this reason, we do not recommend routinely putting copyright statements on products, as they are likely to be misleading and deceptive. However, it is fine to put a copyright statement on packaging or instructions, as long as it is clear that the statement does not apply to the product itself.

Patented symbolWe do recommend considering applying for design registration for new products before they are put on the market. Such products can be labelled “This product is covered by an Australian Registered Design No. 123456789”. The design registration number should be included, as registered designs are like innovation patents; they are granted very quickly, but are not enforceable until they have been examined and certified.

8. What should I do when my intellectual property rights expire or are revoked?

You will need to make sure that products and packaging do not carry out of date intellectual property markings, as they will be considered misleading and deceptive. They may also contravene intellectual property legislation if you no longer possess the intellectual property rights.

Annette Rubinstein, Partner
Phillips Ormonde Fitzpatrick Lawyers

Annette Rubinstein, Former POF Attorney

BA(Hons) LLB(Hons)

Annette has worked in the Legal Policy and Research Department of the Victorian Attorney General’s Department and has practised as a barrister.