Monday, February 2, 2015

Use of R Symbol: A Nasty Export Risk

The Registered Trademark Symbol or ® means that the brand that it is attached to is a service or trade mark that has been registered with a national trade mark office.

Like the trade mark (™) symbol, use of this symbol is not a mandatory requirement, but it is illegal in some countries to use the symbol if the preceding mark is not officially registered with tat particular national trade mark office.

Some countries consider usage of the R symbol on unregistered marks to be an offense subject to fines but there are also countries like South Korea, Russia, India, Japan, Egypt, and Libya where violators are subject to imprisonment.

The symbol ™ denotes that a mark is a trade mark – it may or may not be registered. The ® symbol denotes that the mark is registered in a national trade mark office. Some countries use different variations. Spain and Portugal, for instance, uses MR while Germany uses WZ. In Canada, the French counterpart to ® is MD (marque déposée) and the counterpart to TM is MC (marque de commerce).

It is important to deal with the R symbol on a per country basis due to the differences in how they treat the symbol. The major issue with that, as with all jurisdictional labelling requirements, is that the exporter doesn’t always know or have control over where the products will end up. Third parties could ship the products to different countries.

A barrister I engaged once tried to run an argument in Hong Kong that use of the ® symbol on goods which were not registered was contrary to law and a successful basis for trade mark opposition. In Hong Kong, falsely representing a trade mark as registered is subject to fines, with the exception being when the symbol is used to denote registered status in a country outside of Hong Kong, provided that there are other words indicating said status using typeface that is at least as large and as noticeable as the symbol, in order to remove any assumptions of false representation. The hearing officer rejected the argument on the basis it was set up too late in the day: see paragraphs 72, 73 and 74.

In the US this concept has been successfully tested in court: "The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark." Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991).

See also Perfect Pearl Co., Inc. v. Majestic Pearl & Stone, Inc., 2012 WL 98493 (S.D.N.Y.) discussed in this blog.

The DuetsBlog in 2010 published a post with US examples, in which the author writes of North Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276:

“Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.”

So, do you want to be prosecuted in Russia for trade mark fraud? One solution is over-stickering on the ® symbol, but opening packaging can be considered a manufacturing step with implications in certain industries, especially in pharmaceuticals and alcohol. Alternatively, a company can seek export markets that allow an unmarked packaging.

There’s no obvious solution to this other than registering the mark in jurisdictions to which the goods are exported, or to which they might be exported.

1 comment:

  1. According to the United States Patent and Trademark Office (USPTO), registration of trademark is not compulsory as any company or organization can establish a trademark and use it in commerce. However, when there is any conflict, for example, another company use the trademark to ruin your reputation, you will not have a legal evidence of ownership of the mark and it will take more time and fee to prove that your company and products have been established with the mark. To know your trademark status visit US trademark search.