Using the ® Symbol in Countries Where it is Unregistered

In the UK, the Trade Marks Act 1994 makes it an offence to falsely represent a trademark as registered.

95 - Falsely representing trade mark as registered

(1) It is an offence for a person—

(a) falsely to represent that a mark is a registered trade mark, or

(b) to make a false representation as to the goods or services for which a trade mark is registered knowing or having reason to believe that the representation is false.

The ® symbol is used widely as a warning sign to others that the trademark is registered. There is generally no legal requirement for proprietors to use these symbols to indicate the mark is registered. Despite this, criminal liability does exist for anyone who uses any word or symbol to suggest a mark is registered and it is not.

As a result of the ever increasing globalisation of the market two problems may arise. Firstly, how does the United Kingdom treat those goods with ® marks which relate to overseas registration, but not a UK one? Secondly, how would a UK product with an ® symbol relating to a UK registration avoid trouble in an international market, in particular in the European Community?

In terms of the first scenario, section 95(2) (b) of the Act does lay out some guidance in which proprietors may follow.

(2)For the purposes of this section, the use in the United Kingdom in relation to a trade mark—

(b) of any other word or symbol importing a reference (express or implied) to registration,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the United Kingdom and that the trade mark is in fact so registered for the goods or services in question.

In practice, if an international product was sold within the UK bearing an ® symbol for the international registration but did not have a UK registration, it would be in breach of s.95. However, if there is some indication that the ® actually refers to its international registration part (2)(b) allows for this. Such indication may include, for example, “trademark registered in France under registration number...” within the product's accompanying literature.

The rules become more complicated when UK entities wish to export goods with only UK registration overseas. In order to be sure, the proprietor would need to consult the registration laws in each territory they wish to trade in. For the purpose of this article, the EU will be the main focus.

Historically, in the EU trademarks were thought to impede the free movement of goods, freedom to provide services and distort competition within the Common Market. The EC Trade Mark Directive tried to harmonise the general conditions for obtaining and continuing to hold a registered trademark. However, member states have the discretion to decide whether or not to adopt certain rules of the Directive e.g. which of the optional grounds for refusing a registration or declaring a mark invalid. The use of the ® symbol in the European Union is not explicitly regulated by trademark legislation i.e. there is no s.95 equivalent. Despite this, it is worth noting other EC incentives that may be affected by the use of the symbol.

In general, Directive 85/450/EEC (Sept 1984) and Directive 2006/114EC (Dec 2006) deal with misleading advertising. Arguably, the incorrect use of ® could constitute as misleading advertising. The intellectual property rights associated with an advertisement needs to exist in every country the advertisement is made in order for it not to be considered misleading. Misleading advertising can also amount to unfair competition.

If a product with an unwarranted use of ® amounted to unfair competition, it could result in the imposition of restrictions on those goods. This could potentially conflict with the EU concept of Free Movement of Goods – guaranteed by Art 28 of the EC Treaty. So, a situation might arise where products are distributed to various member states but trademark protection only exists in certain member states were the products are sold.

The German Supreme Court referred this point to the European Court of Justice in Pall Corp. v P.J. Dahlhausen & Co. 1990 (C-238/89) . The ECJ held that in this context the free movement of goods will prevail. The Court took the view that national provisions could have the equivalent effect to a quantitative restriction. Since this judgement trademark owners do not need to worry about injunctive relief if they engage in inter-Community trade but do not have trademark protection in every member state.

Nevertheless, problems may still arise where there is no inter Community trade e.g. where goods are imported into a member state from outside the EU – this would mean that rules on the free movement of goods in the EC Treaty would not apply. Here, lack of trademark protection for the respective member state may still be unfair competition under national rules, in addition to a probable infringement of that member state’s trademark laws.

In conclusion, inter EU trade seems more flexible when using the ® logo provided it is protected in at least some member states. However, this is not the same for goods sold only domestically in one country or imported from outside the EU into an EU member state. As an extra precaution, proprietors would be wise to follow the UK model and include a reference in accompanying product literature which clearly indicates the country to which the ® symbol relates.

By Nicola Mallon

Trademark infringement and the internet

One of the biggest challenges to the territorial nature of trademark protection is the use of trademarks on the internet. What is the situation, for instance, if a French website uses a trademark registered in the UK to promote the same goods or services? If the website is accessible to users in the UK, does use of the trademark constitute infringement?

“omnipresent cyberspace”
An indication of how this situation might be dealt with in the UK, can be gleaned from the court’s approach in 1-800 Flowers Inc v Phonenames Ltd [2000] ETMR 369. The case concerned opposition proceedings in a trademark application to register the alphanumeric mark ‘800-FLOWERS’. The court was asked to consider whether use of the proposed mark on a website proved that the mark was intended for use in the UK. The Applicant argued that since his website could be accessed by users in the UK, this showed a clear intention to use the mark in that territory.

Justice Jacob roundly rejected this idea, arguing that the mere fact that a website can be accessed anywhere in the world, does not mean that it should be regarded as being used everywhere in the world. Instead, the website owner’s intentions should be assessed based on the site content and the impression a user would be likely to gain when entering the site. Taking the alternative view would lead to the untenable situation whereby any use of a trademark on any website, wherever the owner of the site is located, could amount to a trademark infringement anywhere in the world, since a website exists in an “omnipresent cyberspace”. His Lordship concluded:

...[f]or trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him, would be absurd.

Intention of the website owner
Returning to our initial example, Justice Jacob’s reasoning suggests that a French website using a UK trademark in the course of business, will not constitute an infringement if the site’s activities are not directed towards the UK. The website owner might, for example, point to the fact that the content is written mainly in French, or that the prices are only listed in Euro, as evidence that his website is not targeting UK consumers. What would be the case, however, if his website used a ‘co.uk’ domain name? Could this alter the impression given by the content? The recent judgment by the European Court of Justice in the joint cases of Peter Pammer v Reederei Karl Shlüter GmbH (C-585/08) and Hotel Alpenhof GesmbH v Oliver Heller (C-144/09) suggests that this could be the case. In this instance, the Court held that where a website uses a top-level domain name other than that of the member state in which the trader is established, this would amount to strong evidence that the website’s activities were targeting nationals of other member states.

Local trading
These rulings indicate that there are a number of steps an online trader could take to protect their unregistered trademarks from the risk of litigation. Using a local domain name, for instance, rather than opting for territorially-neutral domain names such as ‘.com’ or ‘.eu’, could be a vital way to indicating a website’s intended recipients. Doing so could also have implications for a trader using an unregistered trademark, who wished to rely on the localised nature of his business as a defence to allegations of trademark infringement where he can demonstrate prior use of his mark. Section 11(3) of the Trade Marks Act 1994 provides that a registered trademark will not be infringed by an unregistered mark used in the course of trade, if the mark has an earlier right and applies within a particular locality. The purpose of the provision is to protect local businesses that may have accumulated good will in a brand used within a restricted geographical area. The courts’ sensible approach to trading on the internet means that local businesses can still find a degree of protection if they can demonstrate, through the architecture of their website, that their intention was to target a localised or regional market.



By Katey Dixon