The use of symbols to designate trademarks (registered and
unregistered) signals product quality to customers and
distinguishes goods and/or services from those of competitors.
Symbols frequently used in connection with trademarks and brand
names are ®, ", or SM. These indications,
however, have their origins in Anglo-American legal systems and may
be less common in other European countries. In Germany, for
example, the indications "Schutzmarke,"
"Marke ges. gesch.," or "Wz."
are used, while in France, you can sometimes see the indication
"Marque déposée" in association
with a trademark.
While commonly used, there is a danger that trademark marking could
constitute a misleading advertisement under the different national
laws in Europe. Whether or not to include a marking symbol or
reference should, therefore, be assessed carefully on a
case-by-case basis.
Internationally, ® is generally perceived to mean
"Registered" or "Registered Trademark" and to
indicate an existing trademark registration. The same applies to
indications in certain European languages, such as the German
"Schutzmarke," or the older
"Wz.," which is short for
"Warenzeichen," the old German word for
"trademark," or the French "Marque
déposée." Use of the indications
" to denote a trademark and SM to denote a
service mark, although common in the United States ("
and SM) and the United Kingdom ("), is
less common in other European countries, for example in Germany,
meaning that their use could be ambiguous outside the anglophone
systems. Indeed, even use of the more common ® could create
misconceptions among the relevant consumers.
We analyze below the issues that apply to trademark marking on a
pan-EU level, principally in relation to misleading advertisements,
and then on a national basis, with a focus on the three key
European markets of Germany, the United Kingdom, and France.
Across the European Union
Misleading Advertisements. Can false trademark
marking constitute a misleading advertisement? There is some
guidance on a pan-EU basis, as all EU member states must implement
and apply the European Directives on misleading and comparative
advertising 85/450/EEC (September 1984) and 2006/114/EC (December
2006). In general, misleading advertisements are unlawful in all EU
member states, taking into account all the features of the
advertisement, and in particular of any information it contains
concerning the nature, attributes, and rights of the advertiser,
such as ownership of intellectual property rights (Art. 3 (c)
Directive 2006/114/EC).
EU Directives are often implemented into national law and are then
construed by the respective national courts. So, while the base
provisions of the Directive are the same, there is no set
interpretation that would apply across the EU. It is, however, of
pan-EU applicability that advertisers should take care with
trademark marking to ensure that they do not create an
advertisement that could mislead the consumer as to the ownership
of intellectual property rights, for example marking a trademark as
registered when in fact it is not.
Trademark Marking and the Principle of Free Movement of
Goods. One feature is common to all EU member states. As
stated above, it is reasonable to conclude that an incorrect use of
® in the territory of an EU member state could constitute
misleading advertising under the national law of each EU member
state. The result could be that the distribution of goods with
incorrect trademark marking could be prohibited on a national basis
in the respective EU member state. Such a national prohibition,
however, could conflict with the principle of free movement of
goods within the EU.
The EU functions as a single market, and the principle of free
movement of goods is one of the "four freedoms" of that
single market. This means that quotas and "measures having
equivalent effect" are prohibited (Art. 34 Treaty of the
Functioning of the European Union, "TFEU"). Case law of
the highest court in the EU, the European Court of Justice
("ECJ"), has addressed what measures have
"equivalent effect" and how they affect trade within the
EU. Relevant to this Commentary, the ECJ case law has
addressed false trademark marking.
Based on a request for a preliminary ruling by the Regional Court
of Munich, Germany, in the case of Pall Corp. v P. J.
Dahlhausen & Co. (Case C-238/89, December 13, 1990), the
ECJ addressed the question whether the principle of free movement
of goods could prevail over national trademark and misleading
advertising law. In the Pall/Dahlhausen case, goods
produced and marked in Italy and then distributed in Germany bore
the indication ® next to the trademark MIROPORE. The trademark
was not registered in Germany. Under the German unfair competition
law applicable at that time, this should have been regarded as a
deceptive advertisement. The ECJ, however, concluded that a
provision under national unfair competition law that prohibited the
distribution of products in one member state was a quantitative
restriction (a "quota" or "measure having equivalent
effect"). The principle of free movement of goods, therefore,
prevails over, and renders unenforceable, a national provision on
unfair competition, which enables a company to prohibit the
marketing of a product bearing the ® symbol next to the
trademark, where the trademark is registered in another EU member
state but not the member state in question.
The conclusion drawn by trademark practitioners across the EU from
the Pall/Dahlhausen case is that ® can be used next to
a trademark in the EU where there is a valid trademark registration
at least in one EU member state.
Germany
Unlike in the U.S., where for example the failure to use ® once
a mark is registered could result in the loss of certain rights to
recover profits or money damages for the trademark owner, German
trademark law does not provide for any obligation to use
indications such as ®, ", or equivalent German language
indications next to trademarks, and there are generally no specific
rights granted when using any of these markings.
Consumers in Germany do see indications such as ® and "
and understand that they present more information on trademarks
status, as these indications have become more common over the time.
Still, German consumers may not fully appreciate the actual scope
and meaning of these indications. There is always a risk for
trademark owners that the consumers might not understand the proper
meaning and get the wrong idea about an existing trademark.
An untruthful or deceptive indication of the existence or the scope
of a trademark could constitute an act of misleading advertising
under §§ 3, 5 para. 1 sentence 2 no. 3 of the German Act
Against Unfair Competition ("UWG"). The German courts
tend to apply the UWG strictly. Therefore, any advertisement,
indication, or information that is published needs to be true and
unambiguous. Any information that might deceive or mislead the
potential customer in Germany should be avoided. The legal
consequences of a relevant deception under German unfair
competition law include injunctions with immediate effect and/or
claims for damages.
Misconception as to Territory. From the German
perspective, using the additional indication ® may be
problematic if there is no German national trademark registration.
German consumers might think that the indication ® not only
points toward an existing registration somewhere in the world, but
to a German national registration when it is used in relation to a
trademark in Germany. Whether or not this is the case needs to be
assessed on a case-by-case basis.
As explained above, the ECJ has decided that the principle of free
movement of goods has to be observed in case of trade within the EU
single market.
Nevertheless, problems may still arise when goods are imported into
Germany from outside the EU. Here, there is no movement of goods
within the EU single market, just the import of goods into Germany,
so the principle of the free movement of goods does not apply. In
this case, using the ® symbol with a trademark without a German
national trademark registration could still be unlawful under
German unfair competition law and could result in the prohibition
of marketing and distribution in Germany. Under certain
circumstances, deception can be avoided through the use of other
explicit information provided on, or in relation to, the marked
goods, or in the advertisement for the goods. This information
should clearly indicate that the indication ® points only
toward a foreign trademark registration, as emphasized in a
decision of the Higher Regional Court of Cologne of November 27,
2009, Case 6 U 114/09–Medisoft®. Alternatively, in
the U.S., the use of ® in connection with a trademark not
registered in the United States is excused if the mark is
registered in another country that allows the use of the ®
symbol.
If the consumer wrongly assumes, by virtue or the use of the ®
symbol, that a trademark registration exists in Germany, the use of
the ® symbol generally constitutes a relevant deception and,
therefore, is unlawful under German unfair competition law.
Therefore, ® or "Registered Trademark" should not be
used in Germany before a registration certificate for a trademark
has been issued by the German Patent and Trademark Office, even
where the trademark application has already been submitted and is
pending for registration. It should be noted that the Higher
Regional Court of Munich is of a different opinion where imminent
registration is expected, and the registration is actually effected
as advertised (decision of November 28, 1996, Case 6 U
2682/96).
Misconception as to the Scope of Protection. It is
not only an offense under German unfair competition law to
represent falsely that a mark is a registered trademark, but also
to represent falsely as to the goods or services for which a
trademark is registered (decision of the Higher Regional Court of
Dusseldorf of March 21, 1996, Case 2 U 120/95).
Similarly, where the ® symbol is used with regard to a
combination trademark, but only one part of the mark is actually a
registered trademark and the ® symbol does not clearly point
only to the registered part, this may cause a misconception that
could result in a relevant deception under unfair competition law
(decision of the Federal Patent Court of January 15, 1992, Case 29
W (pat) 133/89–Royals®).
Use of ® and TM. According to U.S.
practice, " refers to a nonregistered trademark. If " is
used on a product on the German market, it is unclear whether
German consumers would associate any meaning to the marking ".
While the ® symbol is generally known by German consumers, the
" (or SM) symbols are not. Nor can it be assumed
that German consumers understand and know that unregistered
trademarks are marked this way in the Anglo-American system. There
are two possible results. First, on the plus side, some German
consumers may only see a decorative element, without any further
meaning, in these symbols, so there is no deception (decision of
the Regional Court of Essen of June 4, 2003, Case 44 O 18/03). On
the negative side, however, others could be convinced that the
symbols " or SM have a similar meaning to the
symbol ® and, therefore, also refer to a registered right. This
could constitute a relevant misconception and deception under
German unfair competition law (decision of Regional Court of Munich
I of July 23, 2003, Case 1 HK O 1755/03).
Trademark owners should carefully consider whether or not to use
the symbols " or SM on the German market. In most
cases, it seems advisable not to use the symbols on the German
market to avoid the use being deemed unlawful under German unfair
competition law.
Misconception as to Ownership. A person who is not
the registered owner (or has the registered owner's permission)
but who uses the ® symbol in connection with a trademark is
likely to deceive consumers unlawfully (decision of the Federal
Court of Justice of February 26, 2009, Case I ZR
219/06–Thermoroll).
What is a Relevant Misconception? The
misconception and deception need to be relevant to constitute an
infringement of unfair competition law. A misconception or
deception is relevant if it can affect competition in the market,
especially where it manipulates the informed purchase decision of a
consumer. However, German case law shows that only in exceptional
cases can relevance be a successful defense.
Closing Statement from a German Perspective. False
trademark marking may constitute a misleading advertisement under
German law. Each advertisement has to be assessed on a case-by-case
basis. Where there is a relevant deception, the misleading
advertising will be regarded as unlawful under German unfair
competition law, with strict legal consequences. Similarly, under
U.S. law, misuse of the ® symbol is a form of false advertising
so as to bar registration or proceeding with an infringement
case.
The most severe consequence in Germany is an immediate injunction
and prohibition on distribution, as only rarely will the courts
allow deadlines for running off existing stock. A preliminary
injunction can be obtained ex parte and can be granted
within a few hours of presentation of the case to the court.
Preliminary relief can be sought by competitors and also by
organizations with rights under German unfair competition law, such
as consumer agencies and brand owner organizations.
Claims for damages are possible, but damages payments are usually
rather low, if granted at all, since the causation between damage
and the action is normally difficult for the claimant to
prove.
United Kingdom
In the UK, the word "registered" in relation to a
trademark or the ® symbol or, where that symbol is not
available, the abbreviation "RTM" (for Registered
Trademark) is used to indicate that a trademark is
registered.
It is a criminal offense under section 95 of the Trade Marks Act
1994, punishable by a fine on conviction, falsely to represent that
a trademark is registered. Registration can be anywhere in the
world and is not limited to registrations in the UK or Europe.
Therefore, use of the ® symbol or "RTM" should be
restricted to trademarks that are registered somewhere in the world
and should not be used where registration has been applied for but
has been refused or is pending grant.
Where a registered trademark is used under a license from the
proprietor of the registered mark, a written statement that the
"trademark"® is used under license of the registered
proprietor is frequently used but is not required by law.
Misconception as to Territory. The use, in the UK,
of the word "registered," ®, "RTM," or any
other word, symbol, or reference that implies that the trademark is
registered, is deemed to be a representation as to registration of
a UK trademark under the Trade Marks Act 1994 under section 95(2)
of that Act. This is the case unless it is shown that the reference
is to registration other than in the UK, and that the trademark is
in fact registered for the relevant goods and services.
As to whether the reference requires some indication on the face of
it that the registration is somewhere other than the UK, or whether
it is sufficient that the reference is consistent with registration
somewhere other than the UK, it has been held that the latter is
the true construction of the statute and that this is consistent
with the decision in Pall Corp. v P. J. Dahlhausen &
Co, mentioned above (Second Sight Ltd v Novell UK Ltd and
Novell Inc. [1995] R.P.C. 423).
Misconceptions as to Scope of Protection. It is an
offense under section 95(1)(b) to make a false representation as to
the goods or services for which a trademark is registered.
Use of ". The symbol " has no legal
significance in the UK but is occasionally used as an indication of
trademark use. It can be used whether a trademark is registered or
unregistered and is usually used to indicate that a trademark has
brand significance.
Closing Statement from a UK Perspective. The use
of any word, symbol, or reference that represents that a trademark
is registered, such as ®, "RTM," or
"registered," should not be used, except in relation to a
trademark registered somewhere in the world. It is also a criminal
offense to imply that a trademark is registered in relation to
goods and services that are outside the scope of registered
protection. A false representation is punishable by a fine on
conviction. It may also affect a claim in passing off or a claim
that a mark has become distinctive through use. According to the
equitable principle of ex turpi causa non oritur actio,
that neither law nor equity assists a wholly fraudulent trade,
where a claimant has used his mark either fraudulently or
deceptively, he cannot succeed in any action for the use of his
trademark.
France
Similar to the situation applicable in Germany, the use of the
symbols " or ® in addition to a brand name has no legal
effect per se in France. Likewise, the use of the French
termination "Marque déposée"
("Filed Trademark") has no specific legal consequences
and is not compulsory in France. However, these symbols are
commonly used in France and are generally understood as indicating
to a consumer or to a competitor that a trademark is registered or
in the course of being registered. It should be noted that there
are only few cases in which the use of " or ® was
contested.
Using the symbols " or ® on the French market in
association with a denomination/logo that is not registered as a
trademark in France may fall under the scope of tort law and unfair
competition law (article 1382 of the French Civil Code). Although
no case law has yet—to our knowledge—addressed
this issue, a court may also find that the use of the symbols
" or ® amounts to misleading advertisement pursuant to
article L. 121-1 of the French Consumer Code. Nevertheless, one
should note that, due to the strict requirements of these
provisions, it is quite unlikely that a judge would apply them
should the use by a company of the symbols " or ® not be
carried out in conjunction with other misleading acts.
Since the principle of free movement of goods has to be respected
in France, the use of a trademark associated with the symbols
" or ® affixed on intracommunity products when said
trademark is registered in at least one member state should not be
challenged. Alternatively, with respect to products or services
imported from outside the EU, the use of said symbols may
constitute an infringement of French law.
Deceiving the Consumer under Unfair Competition
Law. French law prohibits wrongful acts. To
determine whether or not an act is wrongful, French judges notably
take into account the company's intent to deceive consumers. In
light of the aforesaid, one may wonder whether affixing on products
a denomination/logo associated with the symbol ®, when such
denomination/logo is not actually registered in France, deceives
the consumer and as a consequence amounts to unfair competition.
This is precisely the question French judges had to deal with in a
case dated December 16, 1992 (cf. Paris Tribunal of First
Instance, December 16, 1992). The court held that the use of the
symbol ® for a denomination that was not registered in France
deceived French consumers with regard to the scope of protection of
such denomination. However, it is important to note that in this
case, the denomination was also associated with the mention
"Marque déposée," which obviously
was taken into consideration by the judges to rule that it led the
public to believe that this symbol/denomination was duly filed in
France. The court further considered that the fact that said
trademark was registered in Turkey was irrelevant on the ground of
the principle of territoriality of trademark rights.
Misleading Advertising. The EU misleading
advertising provisions have been implemented into French national
law in articles L. 121-1 et. seq of the French Consumer
Code. These articles have a very broad scope and prohibit
passing-off practices in general, including misleading advertising.
In addition, advertising itself is also broadly defined by French
courts. Indeed, according to the French Supreme Court, a mere
packaging on which a trademark is affixed shall be considered as an
advertisement (cf. Supreme Court, Criminal Chamber,
October 19, 2004). The above-mentioned provisions prohibit any
commercial practice based on "any allegations, indications or
representations that would be false or likely to deceive" the
consumer regarding "the existence, the availability or the
nature of the product or service" at stake. Although to our
knowledge no case law has been rendered on this specific issue, one
may wonder whether the use of the symbol ® in conjunction with
a trademark that is not registered in France could deceive the
consumer and thus amount to a passing-off practice. Obviously, such
behavior would be assessed on a case-by-case basis, and it is
likely that a French judge would be reluctant to sanction such
mention per se, unless the claimant is in a position to
show evidence of additional facts corroborating the argument that
the consumer is being deceived by such mention. Nevertheless, in
the absence of a clean line in case law on this issue, one should
be cautious.
While the lawful character of the use of the symbol ® in
association with a denomination/logo that is not registered in
France is questionable, the use of the symbol " shall not
raise any issue (unless, of course, it is used in violation of
third parties' right or for a generic term) since it is
probable that it will not be understood by French consumers.
Indeed, the symbol " only indicates to the public that said
denomination/logo is used on the market as a trademark and
evidences the intention of its owner to identify such
denomination/logo as a trademark.
The Use of the Symbols " or ® as a Shield Against
Revocation. As provided for by the Trademark Directive
2008/95 (implemented in the French Intellectual Property Code under
article L. 714-6), "a trademark shall be liable to revocation
if, after the date on which it was registered, (a) in consequence
of acts or inactivity of the proprietor, it has become the common
name in the trade for a product or service in respect of which it
was registered." Indeed, the success of a product marketed
under a trademark can lead to a situation where the trademark does
not designate the origin of the product and its manufacturer
anymore but a category of product or a product. It is said in this
situation that the trademark has become generic. Examples of
trademarks that have become generic in France are numerous
(e.g., Pina Colada, Vintage, Latex). In order to prevent
trademarks from becoming generic, one may recommend trademark
owners to accompany the use of such exposed trademarks with the
mention "Marque déposée," the
symbol ", or, when applicable, the symbol ®. Although
those symbols have no legal effect per se in France, such
use might nevertheless be taken into account by a judge when
establishing the trademark owners' intention to use the
denomination/logo as a trademark and not as a generic term
(cf. Paris Tribunal of First Instance, November 9, 2007).
Such evidence will be especially useful against professionals or
competitors who are deemed to know and understand the reference to
the symbols " or ®.
Considering the above, it might also be important for a trademark
owner to pay close attention to the use by third parties of its
trademarks. In that respect, one may consider, for instance,
requesting publishers, writers, journalists, or dictionaries
(despite their natural reluctance) to systematically refer to the
trademarks at stake accompanied with the symbols " or
®.
Note that in France, the dilution of a
trademark—resulting in its cancellation—has to
be pronounced by a court and is never automatic. It should be
further noted that even though the mention of the symbols " or
® may help the trademark owner to protect its right, this
mention is not sufficient (cf. Paris Tribunal of First
Instance, October 29, 1997). Indeed, the behavior of the owner of
the trademark itself shall be taken into consideration. In order to
avoid dilution, it must remind the public frequently that the
denomination/logo at stake is, in fact, a registered trademark and
must fight against infringement or abusive use of its
trademark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.