Out-Law / Your Daily Need-To-Know
Symbols or notations next to trade marks are an easy and cost effective way of informing the public that the trade mark in question has a claimed legal ownership.
Notations can also be used to signify that a trade mark is registered or indeed unregistered.
As a general principle, materials should adopt the correct notation for all trade marks you consider to be owned by your business.
General principles for use
Registered trade mark symbol (®)
The ® symbol is a notice of registered ownership used in many countries or regions to advise the public that a trade mark is registered and to provide constructive notice of the legal ownership status of the mark with which it is used. The notation [brand]® should only be applied once the trade mark is registered in any relevant country.
Unregistered trade mark symbol (™)
The ™ symbol is used to provide notice of a claim of common law, i.e. unregistered, rights in a trade mark. If the mark is the subject of a pending trade mark application or is simply used without corresponding registration or pending application, you should adopt the notation [brand]™ only. Note that use of the notation does not guarantee that the owner’s mark will be protected under the trade mark law of the particular country where the notation is being used.
Unregistered service mark symbol (SM)
The SM symbol is basically the same as the notation [brand]™, but is used solely in connection with services as opposed to tangible products. Use of the notation is more common in North America than in other regions.
Benefits of using the registered trade mark symbol
There are no legal requirements to use the ® notation in materials relating to registered trade marks, but there are benefits to doing so. However, use of the notation while the mark is still unregistered may result in claims of misleading consumers or may even constitute a criminal offence in some jurisdictions - for example, in the UK, under section 95 of the 1994 Trade Marks Act.
Use of [brand]® has two general benefits:
- it is effective “notice” to third parties of your established legal rights; and
- it can act as a deterrent to third parties adopting identical or similar names/signs.
Use of ® in the US
Whilst there is no legal requirement to use the ® notation, US law gives registered trade mark owners an entitlement to seek an award of damages.
In any enforcement action, a registered trade mark owner is not entitled to an award of damages or profits unless the infringer had actual knowledge of the registration. In order to avoid any infringer succeeding in a “good faith and innocent infringement” defence to against the issuing of damages or an account of profits within any judgement, it is advisable to always use the ® notation in US materials - provided, of course, that the mark is registered in the US.
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