Feb 28, 2022 | How to use ®TM

How to use ®TM

There is no requirement in law to indicate that a trade mark is registered, while in case it is registered it is common practice to refer to the fact either by using the words “Registered Trade Mark” or the internationally recognized symbol ®. The advantage of indicating that the mark is registered is that it puts third parties on notice of the fact and makes it less likely that an infringer of the trade mark registration could claim in his defense that he did not know that the trade mark was registered. Marking therefore acts as a warning to others to steer clear of the trade mark although it does not, of course, guarantee that they will do so. Even if a trade mark is not registered, it is usually desirable to indicate that the proprietor is claiming rights in it by using the term “Trademark” adjacent to the trade mark or the abbreviation TM. Alternatively, an asterisk may be placed next to the trade mark and, if such is used on packaging, an indication made on some other part of the packaging that the asterisk means the proprietor considers the trade mark as his trade mark. These various ways of indicating proprietary rights in a trade mark, either by registration or at common law, serve as a warning to others not to use the trade mark or something similar to it.

While it is never possible to ensure that a registered trade mark will not be the subject of revocation proceedings by an interested party, there are certain steps for a trade mark owner to take to minimize such a possibility, including:
1) to ensure that the trade mark is used on or in relation to the goods/services for which it is registered
2) to ensure that the trade mark is used correctly, e.g. to ensure that it is always used in conjunction with some other word which is descriptive of the goods/services
3) to ensure that, if the trade mark is used by others, such use is adequately controlled by the registered proprietor