How to use (and not to use) your trade mark

The  ® symbol

Once your trade mark is registered, you can use the ® symbol. It is not a requirement to use this symbol, but it can work as a useful deterrent as it flags to third parties that there is a risk of being sued for infringement if they use the same or a similar mark. It also shows that the company knows about IP and takes it seriously. We therefore recommend using ® wherever possible and practical (for example, where it does not interfere significantly with the flow of text in marketing materials).

Generally speaking, you should avoid using ® in a country where the mark not registered, as this can be a statutory offence. In practice, the UK tends to take a fairly relaxed approach to the use of ® provided the trade mark is registered somewhere, although there is always the very remote risk of a competitor raising a challenge as a nuisance factor. However, it does vary from country to country; for example, Germany is much stricter and ® should ideally be used only if the mark is registered in that country. Clearly that may cause practical problems if the same packaging is used across the EU, so a pragmatic approach may be required.

The TM symbol

The letters TM can be used for any trade mark, whether registered or not. They simply signify that you consider the word or logo to be your trade mark and do not carry any legal significance. Again, there is no requirement to use the letters, although as with ® they may have some deterrent effect, especially against competitors with a limited understanding of IP. Where a mark is registered it usually sends a stronger message to use ® than TM.

Using TM can therefore work well for marks where applications have either not yet been filed or are only pending and not yet granted. The letters can also be useful for marks which you have chosen not to or are unable to register, for example more descriptive marks or straplines.

Statements of ownership

Some companies choose to put a statement of ownership on their products, packaging or marketing materials, for example “all intellectual property including trade marks, trade names, logos, patents and registered designs are the property of x”, or alternatively “x, y and z are [registered – as applicable] trade marks of company A”. This is not compulsory (and some companies anyway prefer to put such statements on their websites), but as with ® or TM it can act as a deterrent and flags to others that you understand IP and are aware of your rights.

Correct use of trade marks as adjectives and the risk of becoming generic

Trade marks should never be used as nouns or morphed in to verbs. Ideally use should be only as an adjective, so “Levi’s jeans” not “Levi’s” and “a Hoover vacuum cleaner” not “a hoover” or “hoovering”. While this may not always be as appealing from a marketer’s perspective, it is an important point to remember. This is because misuse of a trade mark can lead to it becoming generic over time, as it becomes synonymous with the actual product rather than being seen as a badge of origin for one particular company. When a trade mark becomes generic (as has happened with aspirin, escalator and linoleum), the owner will find it increasingly difficult and eventually impossible to enforce their rights against third parties and their registrations will be cancelled.

If you have a brand new product or service, you need to be particularly alert to this danger, since in that case there is not always an obvious descriptor noun to use along with the trade mark and hence a greater risk of your mark becoming generic as competitors enter the market.

You should therefore police both your own use of your marks and use by others, for example writing to dictionaries, newspapers and social media sites to request corrections as need be. The owners of the trade marks HOOVER and GOOGLE will no doubt be working hard on this, correcting references like “hoovering” (when the writer means “vacuum cleaning”) and “googling” (when the writer means a search online). Trying to use a capital letter for the trade mark can sometimes help, but that alone is not necessarily enough.

How to avoid undermining your trade mark

It can often be tempting to pick a mark which describes or alludes to the product or service. Entirely descriptive marks will generally not be registrable but some are on the borderline and it is particularly important to make sure you look after these marks by using them correctly as signs of origin (ie as trade marks) rather than as descriptive terms. If you are food company with a chocolate bar called CHOCCIE, for example, make sure you do not advertise it as a “choccie-flavoured snack bar”. This kind of misuse can make it harder to register your mark in the first place (when examiners see even you using it descriptively) but it can also threaten the validity of a registration once granted and cause problems when it comes to enforcement against third party misuse.

How to avoid the risk of non-use cancellation

Once your trade mark has been registered for a certain period of time (5 years in most countries) it becomes vulnerable to an attack for non-use. This means that a third party could apply to cancel your registration for any goods/services for which it has not been used. You will also struggle to enforce your rights in any un-used goods/services in opposition or infringement proceedings.

Bear in mind also that your mark must be used “as registered” to defend against these kinds of non-use challenges. This can often be a real problem for logo marks in particular, since colours, layouts, fonts and designs tend to change over time. However, word marks may also present a danger, thanks to changes between upper and lower case and additional hyphens or spaces. For example, use of BisaBoo, BISA-BOO or BISA BOO may well not count as use of the registered mark BISABOO. For this reason, it is important to police your marketing materials and make sure the mark is used exactly as registered as far as possible. Alternatively, if you do decide to change your logo or how you use the mark, we recommend filing a fresh trade mark application to protect that new version.

Lastly, you should keep good records of how you have been using the mark (for example on invoices, catalogues, screen shots, marketing and business materials, adverts and so on). This kind of evidence will put you in a strong position to prove use of your mark and defeat any non-use challenge, should the need arise.



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