October 05, 2018
Trademarks - Correct use of the TM and ® symbols
The TM and ® symbols are often used alongside trademarks in a manner that does not comply with the regulations governing their use.
The primary function of the TM and ® symbols is to inform third parties that the sign used to identify a product or service by a company corresponds to a trademark right.
The TM symbol, an acronym for "TradeMark", is used alongside a trademark for which an application for registration has been submitted to the competent authority but the process has not yet been completed. In many countries, this symbol is used to indicate de facto1 use of the trademark.
The ® symbol means "registered" and is only permitted once the trademark has been registered, that is, once the registration process has been completed and the trademark office of the country in which registration was requested has approved it. This symbol indicates that there is an exclusive right to the name. The symbol may only be used in the country where the exclusive right was obtained and for the products or services for which it has been registered.
It is always advisable to use these symbols correctly, as some countries impose significant penalties for improper or untrue use of these definitions. Consider, for example, the United States, where any untrue indication is severely punishable.
In Italy, Article 127.2 of the Industrial Property Code (CPI) clarifies that "Anyone who affixes, on an object, words or indications that do not correspond to the truth, tending to convey the belief that the object is protected by a patent, design, model, or topography, or to convey the belief that the trademark distinguishing it has been registered, shall be punished with an administrative fine ranging from € 51.65 to € 516.46."
Although the use of these symbols is not mandatory, it is important to use the registration symbol for trademarks already granted to correctly inform competitors of the existence of an exclusive right. Such use can serve as a deterrent to prevent third parties from using a confusingly similar trademark, but it is also essential in some countries for claims for damages related to alleged infringement. Failure to use the ® for a registered trademark can, in fact, limit claims for damages recoverable in an alleged infringement.
There are also other symbols, such as the © (copyright), which is used to indicate a copyright, literally a right to copy or reproduce the protected work. The circled D symbol, quite rare, is placed next to objects for which a design registration application has been filed. In some countries, such as the USA, a trademark that identifies only services rather than products is called a "service mark." The SM symbol, similar to the one for a trademark, appears next to the trademark.
Martina Polo
1 When we talk about a de facto trademark, we are referring to a particular situation, recognised by some legal systems, which constitutes an exclusive right on the trademark when, through use, the sign has acquired notoriety throughout the territory of the State (in the absence of notoriety throughout the territory, in our legal system we speak of local pre-use and of an exclusive right within the limits of pre-use).
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