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Using Trade Mark Symbols: “I know my rights, and I’m not afraid to use them!”

Jun 15, 2012

This post is part three of our ‘Reasons to register your trade mark’ blog series, and follows posts discussing exclusive rights and registration in different jurisdictions.  You must have seen the ™ or the ® symbol used in connection with brand names and slogans in advertising or on websites.  These are used for several reasons:   1. To put third parties on notice that the given name or slogan is being used as a trade mark ™ and/or it has been registered ® as such,   2. To ensure that the name or slogan is being used in a trade mark sense and not descriptively,   3. To build up distinctiveness in a name or slogan (which may at first instance be descriptive), which can be acquired by use.     Firstly, use of the symbols (™ or ®) communicates to all third parties the status of the trade mark (i.e. that it is unregistered or registered), but it also demonstrates to such third parties that you (as the right holder) are aware of the intellectual property in the mark/slogan. It follows that you are likely to seek to enforce it if necessary.   Once you put the registered trade mark symbol against your brand, it’s likely you will find yourself being taken more seriously by investors or potential competitors. It is a powerful warning sign that you are ready to fight your corner and that you are establishing a ‘brand’ rather that just running a business.   Secondly, use of the symbols (™ or ®) communicates that the mark/slogan is being used in a trade mark sense and not descriptively (i.e. merely as a description of your goods or services). This will link your mark/slogan to your brand and communicate to all that you are investing in it. In the event that you do not register your mark/slogan at the outset, use of the ™ symbol can be helpful if you later want to register it as a trade mark.   Finally, some trade marks may not be registrable from the outset (e.g. if the mark is descriptive). However, following use over time it may be possible to register a trade mark even if the mark is descriptive or not distinctive. Therefore some businesses will use the mark displaying the ™ indicating they are using the mark as a trade mark, and later seek to register it.   An example of this was in March 1995 when Nestle applied to register the trade mark “HAVE A BREAK” in Class 30 in respect of: “Chocolate; chocolate products; confectionery; candy; biscuits”. Although the registration was opposed by Asda and Mars on various grounds, the mark was eventually registered as a result of distinctiveness acquired through use over time and trade evidence.   Slogans were recently considered by our recent blog on Dame Vivienne Westwood (please see our blog here.   A quick word of warning though – be careful to not use the ® symbol if you do not have a trade mark registration, as this is in breach of trade mark law. If you are unsure of your use of the ™ or ® symbols, talk to one of our lawyers in the intellectual property team today.