Companies often use the symbols “®” and “™” to show the status of their trademarks. However, they are, at times, used incorrectly and trademark owners may not be aware that misuse can have significant consequences. The “®” means that a mark has been registered with the governing body of the country, while the “™” means that the mark has not been registered but is in use by the company.
In some countries such as Mexico, Chile, Peru, Philippines, the marking is compulsory, in the sense that in the absence of any marking with the symbol “®” a trademark registration cannot be opposed against third parties.
For the countries where the use of the symbols is not mandatory, companies should take into consideration that this could have dissuasive influence on third parties, as a warning that the owner of the trademark will defend against unauthorized use.
As the rules may vary from country to country, we aim to provide an overview of the characteristics of specific countries, as well as some details and advice about the proper use of these symbols and how to avoid potential problems.
1. The “®” sign
The “®” symbol is used by companies to inform consumers and future trademark applicants that their sign is a registered trademark. It is usually placed on the right-hand side of the trademark, superscripted, and in a smaller type size than the mark itself. The “®” is used exclusively with trademarks that are actually registered. The use of the “®” before the registration of the trademark is illegal.
How can I use the “®” symbol depending on the country where the trademark is used?
- United Kingdom: The “®” symbol or the abbreviation "RTM" (for Registered Trade Mark) indicates that your trademark is registered. This indication is admissible if the trademark is registered somewhere other than in the United Kingdom. However, you would infringe the law (Section 95 of the Trade Marks Act 1994) if you used the registered symbol “®” or the abbreviation "RTM" on a mark that is not registered anywhere in the world.
- France: The addition of the “®” to your trademark does not have any direct legal significance. Nevertheless, should you use the symbol in combination with a trademark that is not registered this could be considered an act of unfair competition (article 1382 of the French Civil Code). The misuse of the symbols can also be understood more specifically as misleading advertisement.
- United States of America: The failure to use the “®” after a trademark is registered could lead to the loss of rights deriving from the trademark (e.g. profit recovery or damages) when entering an action against a trademark infringer. Improper use of the mark can devalue the mark, making enforcement difficult.
Importing products with a registered trademark “®” symbol to a country where the trademark is not registered
- The European Union: If products marked with a registered trademark symbol are imported within the European Union, the principle of free movement of goods prevails over the national Unfair Competition Law according to the European Court of Justice. The importation of foreign products on which the registered trademark symbol appears to a country where the trademark is not registered is not considered misleading advertisement or an infringement of the Unfair Competition Law.
- The other cases: If “marked” products have to be imported in a country where the trademark is not registered, options within the law exist:
- Overstickering: Hide the trademark symbols. This can be expensive and not always permitted due to regulatory constraints.
- Avoid marking on the packaging: This option may decrease the value of the mark and may be illegal in countries where marking is mandatory or where there is a clear advantage to make use of the marking.
- Country Labeling: In a German decision of the Higher Regional Court of Cologne of November 27, 2009, Case 6 U 114/09–Medisoft®, the court ruled that it is necessary to provide additional explicit information on or in relation to the marked goods, or at least in the advertisement for the goods stating that the indication “®” points only toward a foreign trademark registration.
2. The “™” sign
The sign “™” means “trademark” and was originally used exclusively in the USA or in the UK. It is an indication to the public that the sign is used as a trademark with the aim to distinguish the marked products or services from those of other companies.
How can I use the sign “™” depending on the country where the trademark is used?
- If you use the trademark in the USA, you may use the “™” designation to alert the public that you consider yourself the owner of the mark. It is not mandatory to have filed an application with the United States Patent and Trademark Office (USPTO). The symbol “™” may be used whether you intend to register the mark or not.
- If you use the trademark in Germany, it is preferable to use it solely in connection with registered trademarks. The Regional Court of Munich I decided on July 23, 2003 (case 1HK O 1755/03) to refuse the use of the sign “™” in combination with a trade name that has not been registered. The use before registration has been considered misleading and deceptive under German Unfair Competition Law. However, there have been contradictory decisions at the same level of jurisdiction. Until a final decision is made by the highest civil court of Germany, you should only use the “™” symbol with registered marks.
Understanding that regulations regarding trademark marking in the countries where you market your products may be different, you should seek advice from a local trademark attorney. When seeking advice be sure to provide the list of the most important markets for your product. This will facilitate the identification of the countries where marking is mandatory or where sanctions can be issued in cases of misuse. In some situations, it might be wiser not to use the “™” or “®” symbol in order to avoid unlawful use.