We are often asked what the symbols "TM" and "®" actually mean and when we can use them. This article focuses on what the symbols represent, when we can use them, and why using them may be a good idea.

You usually see "TM" and "®" in advertisements and on product packaging where they are stated in continuation of a word or another symbol used by a company to market its products or services.

The symbols originate from US law, but the use of "TM" and "®" are recognised internationally today as a way for trademark owners to indicate that a logo, a slogan or the like is a protected trademark - or that they believe this to be the case.

The "®” symbol or "(R)” means "registered trademark" and indicates that it is a registered trademark.

"TM" only means "trademark" and is used for symbols to which the trademark owner considers to have obtained a trademark right without having registered the symbol as a trademark.

WHY IS IT A GOOD IDEA TO USE "TM" AND "®"?

As opposed to certain other countries, there is no requirement in Denmark to use the symbols "TM" or "®" to show that you hold a trademark right. You will therefore not forfeit your trademark right if you do not use the symbols, and you can still complain about others’ unjustified use of the trademark even if you have not used the symbols.

Nevertheless, it can still be a good idea to carefully consider using “TM” and "®" in your marketing.

The reason is that a trademark may degenerate, which means that it may become a general designation for the product or service and no longer enjoy protection as a trademark. "Gramophone" and "linoleum" are examples of earlier trademarks which have degenerated.

If a trademark degenerates, it means that others - including competitors - may use the trademark. Your trademark may particularly risk degenerating if it is stated in e.g. a dictionary, an encyclopaedia or a similar reference book. In those cases, it is therefore possible to ask the publisher of the work to add "TM" or "®” to your trademark.

"TM" and "®" may also be used for informing other traders that a name or logo is a protected trademark (or that you consider the name or logo to be protected) so that they - hopefully - refrain from using it.

WHEN CAN I USE "TM" AND "®"?

There has previously been doubt as to whether import of products including the symbol "®” to countries where the trademark is not registered is misleading marketing.

The European Court of Justice eliminated that doubt with the judgment in C-238/89 where the Court ruled that if the trademark is registered in one Member State and used within the EU, it is contrary to the rules on the free movement of goods if the Member State’s legislation prohibits the use of the "®” symbol for the very reason that the trademark is not registered in the Member State to which the products are imported.

Based on the judgment, it must be assumed that it is neither misleading advertising or contrary to good marketing practices or similar rules to use the "®” symbol in EU Member States where the trademark is not registered as long as the trademark is registered in minimum one other Member State.

It cannot be ruled out that it may be contrary to good marketing practices or constitute misleading use if TM or "®" is used for a symbol which is apparently not protected as a trademark in some jurisdictions in the EU.

WHAT SHOULD I BE PARTICULARLY AWARE OF?

The use of "TM" and "®" is relatively widespread all over the world, but the regulation thereof varies significantly from country to country. In some countries, it is mandatory to use the "®” symbol if you have a registered trademark, and you may forfeit your rights if you fail to use the "®” symbol.

Under US law, you may forfeit your rights if you fail to use "®" for your registered trademark or otherwise fail to inform third parties that your feature is protected as a trademark. You may also risk forfeiting your rights to claim damages for any infringements.

In some jurisdictions, it may be contrary to legislation to use the "®” symbol if the trademark has not been registered. In some countries, it is even a criminal offence.

RECOMMENDATION FOR THE USE OF THE TRADEMARK SYMBOLS

If you wish to use "TM" and "®" in Denmark, it may be a good idea to ensure that your trademark has been registered in advance so that you do not risk violating legislation by using the symbols.

Considering the great variation in the regulation of the use of "TM" and "®" abroad, it is also a good idea to seek advice on the use thereof if you are exporting or are planning to export to other countries.

Authors

Christian Kragelund

Partner

Jens Jakob Bugge

Partner