Is it necessary for me to use symbols ® and ™ to protect my brand?
The main purpose of a trade mark is to tell consumers that a product or service has an identifiable origin. A trade mark could be a word, logo, slogan, colour, shape, sound or even a smell, but generally speaking, a trade mark could be anything which can be represented in a clear and precise way which serves as a distinguisher of origin.
For example, you’re on a motorway and you see a billboard with a logo that has two large golden arches – you know this sign is an identifier for the famous McDonald’s fast food restaurant.
Business owners and individuals often hurry to emboss symbols on their brand names or logos, such as with an ® or a ™ without fully understanding what they mean.
The “®” stands for ‘registered’. More specifically, that the trade mark has been registered with an official Intellectual Property Office such as the UK Intellectual Property Office, and while it is somewhat tempting to go ahead and stick an ® on your packaging or brand name, there can be serious implications if done in the wrong context.
In the UK, it is a criminal offence to use the ® symbol or “RTM” abbreviation on a mark that has not been registered (Section 95, Trade Marks Act 1994). In other countries use of the ® symbol for an unregistered mark could also breach advertising and competition rules or constitute fraud.
Is it compulsory in the UK to use the ® symbol when a trade mark is registered?
No – marking products with the ® symbol is not compulsory in the UK, nevertheless it does serve to ward off those who may wish to infringe upon your rights. However in some jurisdictions, marking a registered trade mark with ® is mandatory or in others; not displaying it could result in the loss of certain rights deriving from the trade mark. For example, recovering damages in an infringement action.
In view of this, as an owner of a trade mark, you should seek professional legal advice regarding local rules in each relevant jurisdiction in deciding whether to use the ® symbol.
So, what’s the difference between the ® and ™ symbols?
In comparison, “™” displays that a mark is in use but has not yet been registered. This symbol is often used when a mark is pending registration, or if the mark has not been registered, but is in use by a company or individual.
Is it compulsory in the UK to use the ™ symbol when a trade mark is unregistered?
There is no requirement in the UK to display the ™ symbol on an unregistered trade mark. However similarly to ®, ™ serves to tell third parties that the mark is in use and also that the owner could be willing to enforce their unregistered rights, such as through the common law tort of passing off.
Speaking of symbols, what about the © symbol?
The © symbol lets others know that your ‘work’ is protected by copyright law. Contrary to common thinking, in the UK, copyright is automatic so there is no legal obligation to have your works, such as literary, musical, film and/or artistic works registered.
But, similarly to the ® and ™ symbols, there is no obligation on rights owners under UK law to use © to protect their works. Its use is simply to indicate that the owner has legal rights and no third party is allowed to use their works in a way which would constitute copyright infringement.
In summary, although the use of these symbols in the UK is not compulsory nor do they provide further legal protection than is already available, they do however add visible weight to your rights. Other individuals and businesses are able to easily identify that a right has been registered, is intended to be registered or that the owner is willing to do what it takes to defend their trade mark whether registered or unregistered. In a world where copycat businesses and counterfeits are endemic, it is important that businesses and individuals continue to seek innovative and effective methods which provide a clear public message that they are ready to protect their brand. Marking a product with the aforementioned symbols is just one way brand owners can do this.