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Trade Mark Symbols 101 : ™ vs ®

November 25, 2021

Introduction

Creating and possessing an element that would enable business proprietors to create distinct identities for themselves is a mandatory aspect that one simply cannot afford to ignore if long term sustenance in the competitive market place is a key objective of their business plans.

This calls for the protection of the said element to ensure exclusivity of the same. Such protection is essential for safeguarding the very characteristic of distinction that the element would possess, which is conferred by law through the Trade Marks Act, 1999 and the Trade Mark Rules, 2017.

Types of Trademark

The abovementioned ‘element’ or mark could include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof[1], as provided by the Act. Furthermore, a trademark within the scope of the said Act has been defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.[2]

Use of trademark symbols in India

While the Indian Trade Marks Act is silent on the mandatory usage of symbols, several business entities opt to use symbols such as ™ and ® at the end of their mark, to display statutory or common law right to the general public over that mark. However, it is pertinent to understand the appropriate usage of these symbols and the repercussions of the same.

According to the World Intellectual Property Organization (WIPO), the ™ symbol is used when an application for a trade mark has been made or when that particular mark at the end of which the said symbol is being used is a trade mark of that particular business. On the other hand, the ® symbol is used when the mark has been registered with the respective Trade Mark Office. However, strictly speaking, it is not mandatory to use these symbols at any stage in the eyes of the law, and the usage or non-usage of the same do not give rise to any kind of legal consequences or protection.[3]

The reason why businesses opt to use these symbols is not a statutory requirement but in the interest of these businesses themselves. The purpose of incorporating either of these symbols in the mark of a business is to act as a means of communicating to the consumers that the same is a brand of the business entity. It also aids in indicating to potential infringers that the said mark has been in use or has been duly and legally registered in compliance of the requisite laws, giving the owner exclusive statutory rights to use the trade mark and initiate passing off/infringement proceedings in an event where any misuse of the same occurs. Further, it does help in creating awareness to the entity’s competitors in the trade by attaching an element of distinctiveness in their marks and asserting that the same is not generic in nature.

However, since there is no legal mandate for the use of these symbols, several business entities who get their marks registered in a bona fide manner may also choose not to use these symbols. The reasons for opting out could vary from aesthetic reasons to the hassle of updating promotional materials once the status changes to the responsibility of ensuring correct usage of the ® insignia, product-wise or jurisdiction-wise.

Dishonest use of trademark symbols

The lack of mandate, however, also brings with it the threat of using these symbols in an uninformed, dishonest or mala fide manner. Though the Act does not explicitly refer to the false usage of these symbols, Section 107 of the Act provides for the penalty for falsely representing a trade mark as registered, when in reality it is not. The Section broadly enlists three situations in which a mark may be dishonestly represented as a bona fide registered trademark, which is prohibited by the Section. Section 107 (penalty for falsely representing a trade mark as registered) states that no representation should be made with respect to (i) an unregistered trade mark to the effect that it is registered or (ii) a part of a registered trade mark which is not separately registered as a separately registered trade mark or (iii) a trade mark registered in respect of any goods or services in respect of which it is not registered or (iv) registration of a trade mark giving an exclusive right to the use thereof which, having regard to a limitation imposed, does not. The penalty imposed is imprisonment for a term which may extend to three years, or with fine, or both.

As far as the ™ mark is concerned, the Act is entirely silent on the same as it has not been defined in or provided for throughout the Act. It goes without saying that ® or ™ cannot be a part of the trade mark at the time of filing the mark with the Trademark Registry. A mark is not eligible to use the ® symbol even at the stage of having a pending application for registration, awaiting acceptance. The ® symbol is limited to be put to use only after the mark has been registered with the Trade mark Office. However, the ™ symbol is not subjected to the registration status of a particular mark or application filing.

Law on use of trademark symbols in foreign jurisdictions

While the above is the stand in India, in countries like Canada no legal rules exist for either the usage or the false usage of these symbols. However, the dishonest use of these symbols to deceive the public may trigger legal actions. In the United States, the USPTO has expressed that the symbols ™ and SM used for goods and services respectively do not have any legal significance, but the function of the same has been only to notify and establish ownership of the mark. The ® symbol may be used only upon the trade mark being listed in the federal registration, much like the system followed in India. In the case of U.S. vs. Sung[4], the 7th Circuit admitted the question of whether a person “knowingly using a counterfeit mark” entail a demonstration that he knew the mark to be someone else’s registered trademark. It was admitted in the negative that defining a counterfeit mark as a spurious mark “that is identical with, or substantially indistinguishable from, a mark registered for those goods or services on the principal register in the USPTO and in use, whether or not the defendant knew such mark was so registered”.

Case law

In the case of World Wrestling Entertainment Inc. vs. Reshma Collection and Ors.[5], the High Court of Delhi accepted the contention wherein the absence of the ® mark was used as an indicator to distinguish between goods that were original and those that were counterfeit. In the case of Aegon Life Insurance Company Limited vs. Aviva Life Insurance Company India Ltd. [6], the Bombay High Court gave substance to the argument that the Plaintiff failed to assert proprietary rights in its mark by not using the ™ symbol alongside its trade mark or seeking statutory rights/protection by registration of its trade mark.

Conclusion

While it is well established that trade marks are highly territorial in nature, the same requires greater caution to be practiced while using the ® insignia, especially since many business entities have worldwide operations and trade marks registered across various countries. If an unregistered mark using the ™ symbol in India is granted registration in another country, which enables the company to attach the ® symbol at the end of it, the same does not impliedly give the entity a right to use the ® symbol in India. The usage of the ® symbol is subjected to the registration granted to the mark in question in India, wherein the false usage of the same accounts for legal repercussions and is considered an unfair trade practice and misleading advertising.

While it has not been mandatory to use these symbols, the bona fide usage of the symbols ® or ™ is a good practice as the same not only indicates the status of the mark, but it also enables the company to establish ownership on inception, while acting as a deterrent and also contributing in preventing genericide of a mark.

[1] Section 2(1)(m), Trade Marks Act, 1999.

[2] Section 2(1)(zb), Trade Marks Act, 1999.

[3] Page No. 59, Making a Mark: An Introduction to Trademarks for Small and Medium sized Enterprises, WIPO publication No. 900.1E.

[4]  51 F.3d 92; MANU/FEVT/0494/1995

[5]  237 (2017) DLT 197.

[6] 2019 (80) PTC 1 (Bom).

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