Trademark marking generally refers to the use of the trademark designations “TM,” “SM” and ®, which are commonly accepted designations for identifying trademarks and indicating their ownership.
When brand owners use their trademarks within the U.S. – the issue of whether to use the trademark symbols TM, SM or ® is relatively straightforward. The general rule is to use the designation “TM” for (federally) unregistered trademarks for products (Trademark™) and “SM” for (federally) unregistered marks for services. Once a trademark registers with the United States Patent and Trademark Office (“USPTO”), however, the TM or SM may be replaced with the coveted “R in a circle” — ®. Once trademarks register with the USPTO and brand owners begin using the registration symbol “®” next to their marks on packaging, product sheets and/or marketing materials, what should brand owners do with respect to using the “®” symbol in countries where their marks are not registered?
When U.S. registered trademarks are used in countries where the marks are not registered, the issue of trademark marking can be complicated, since many countries have their own trademark marking laws. Understanding local laws and legal issues that may arise with respect to trademark marking is a first step to understanding and minimizing the potential risks of violating certain country laws and requirements. It seems clear that most countries recognize the trademark registration symbol ® – and common law trademark symbols SM and TM – in practice. Their use, however, are typically optional and/or have no recognized legal effect as to protection of trademark rights in some countries.
Although the ® symbol has become well-recognized, it is by no means universally accepted. For instance, “Marque Deposee” is preferred in some French language territories and “Marca Registrada” or “M.R.” is preferred in certain Spanish or Portuguese speaking territories. Certain country laws including, China, Chile, Costa Rica and Indonesia, require the use of proper registration notice in order to maintain a registration and trademark rights. Furthermore, other countries, including the United States, Bolivia, Denmark, Philippines, and European Union, require proper use of the registration symbol ® to recover damages and attorneys’ fees for willful infringement, while some other countries require proper use to protect against loss of trademark rights (such as the mark becoming generic).
However, some local laws make it unlawful to claim trademark registration status when a mark is not registered in that country. Countries, including Germany, China, Ireland, Italy, New Zealand, Pakistan and Peru, may actually impose penalties for mismarking of trademarks, such as fines, damages, injunctions and/or imprisonment. There are also a few countries that may impose penalties for use of the symbols “TM” and/or “SM” if consumers would perceive use of those designations as an indication that the mark is actually “registered” in that country; France appears to be one of those countries.
The dilemma for brand owners that have registered their marks in only some of the countries in which they conduct business is that in order to conform to local trademark marking law requirements, they may need to develop tailored marketing and packaging materials to avoid violating those laws. The main problems associated with such tailoring of marketing and packaging materials are – of course – costs and time. Based upon the differences in local trademark laws, developing a “one-size fits all” trademark marking strategy is likely to prove difficult, as one strategy might violate – to a certain extent – certain local laws or result in loss of certain trademark rights against an infringer, while others may not. Adopting a global trademark marking strategy that is not tailored to each specific jurisdiction, however, should be one that seeks to minimize potential risks.
Although it is preferable for brand owners to tailor their trademark marking policies to conform to local law requirements, for most companies, however, business realities, such as cost and time, result in the implementation of strategies designed to minimize cost, time and risk.