Although it is very common to see the ® symbol on advertising and marketing materials in everyday life, how many consumers know what it means? And how common is it for brands to misuse the ® symbol?

The ® symbol 

In the UK, you can only insert the small ® symbol after a mark if you have a fully registered trade mark with a certificate of registration and registration number. The UK Intellectual Property Office (UKIPO) will have a record of your trade mark, and declaring that it is registered is often regarded as the best form of deterrent for infringement:  by using the ® symbol once the mark is registered, you can freely demonstrate to the market, and both your customers and competitors, that you have protected your brand and third parties cannot use (or abuse) it.

However because it is a recognised deterrent, it can be tempting to add the ® symbol after a mark irrespective of whether it is registered or not. If a business or individual does not have a registered mark but uses the ® symbol nonetheless, then it is likely to be ‘falsely representing…[a] trade mark as registered’ under the legislation, which is a criminal offence and punishable by way of a penalty fine of up to £1,000 for each instance of unlawful use. For a smaller business or individual, particularly if there is an extensive portfolio of unregistered marks using the ® sign, it is possible that such penalty could have quite a significant impact.

Anyone concerned over the use of the ® symbol should carry out an audit of their trade mark portfolio to establish (i) which trade marks are registered and for which goods/services; and (ii) which trade marks are not registered. Any mark which is unregistered must not use the ® symbol, but the brand owner should seek advice as to whether the mark is registerable so that, where appropriate, they can take steps to register it with the UKIPO and any other relevant trade mark office.

 The process of registering a trade mark in the UK usually only takes a few months (subject to any third party oppositions) and once registered, it is valid for an initial 10 years. Provided that the mark is used and all of the renewal fees are paid, a trade mark can be protected by registration indefinitely.

The ™ sign

If a brand owner is unable, or chooses not to, register a trade mark, then they may use the ™ sign instead as an indication to the public that certain common law rights are asserted over the mark. Whilst it does not guarantee protection, it may still act as some form of deterrent to infringers (albeit not as much as the ®). There is no UK legislation governing the use of ™, and so businesses and individuals can use it freely without risk of breaching the law.

However, as there may be additional rules around the use of the trade mark symbols in other jurisdictions, further advice on a country-by-country basis should be sought. For example in the US, failure to use the ® symbol after a trade mark which is registered could lead to the loss of rights such as profit recovery or damages, when one enters an action against a trade mark infringer.

When considering any trade mark matters, taking a precautionary approach to the management of a portfolio may be the best way to avoid unintended (and possibly expensive) consequences, whilst maintaining protection of a brand. Simply checking that the ® and ™ symbols are used correctly is an easy step to use your trade marks in accordance with the law.