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The use of the ®, ™ and other trade mark markings in South Africa and globally

by Jeremy Speres on 6 August 2012


Trade mark marking refers to the use of symbols or wording to identify a trade mark over which an owner claims exclusive trade mark rights. Two common examples include the ® and ™ symbols. Each country has its own laws pertaining to marking and not all countries require or even provide for the use of common marking indications. This can complicate packaging, labelling and general marketing for businesses trading in multiple countries.

Markings

The ® symbol indicates that the mark is registered in the country in which the symbol is used.  Use of the ® symbol in circumstances in which the mark is not registered may lead to criminal and civil sanctions, depending on the relevant country.  

The ™ symbol is used to indicate that the owner of the mark claims exclusive rights to the mark, regardless of whether the mark is registered or not registered.  This symbol is often used where the owner has not registered the trade mark, but nevertheless claims rights to the mark.  Rights to a trade mark are not just conferred by registration but can also be secured through use of the mark. 

In countries where English is not the dominant language, it may be more appropriate, or in some cases prescribed, to use alternative markings.  In countries where Spanish is the dominant language, it may be more appropriate to use “MR” or "Marca Registrada" instead of the ® symbol.  In countries where French is dominant, one may use “Marque Déposée" or “MD” instead of the ® symbol or "Marque de Commerce" or “MC” instead of the ™ symbol.
 
Marking symbols are usually placed at the end of the trade mark, in superscript. 

Purpose of marking

Trade mark marking can be valuable in maintaining and enforcing your trade mark rights.  Some of the more important benefits of marking are:
  1. Marking informs the world at large that the owner claims exclusive rights over the mark - a warning as such;

  2. In some countries, the use of marking allows the owner to claim additional remedies against a trade mark infringer in litigation.  For instance, in the USA, the owner of a registered mark can only claim monetary damages from an infringer where marking has been used or the infringer had actual notice that the mark was registered;

  3. Marking can help maintain the trade mark owner’s rights to the mark by making it clear that the mark is not being used descriptively.  Descriptive use of a mark can lead to the mark becoming the generic term for the particular type of product in question, otherwise known as “genericide”, which often leads to the trade mark being declared invalid.  Examples of trade marks that have suffered this fate include ELEVATOR, ASPIRIN and AQUA-LUNG.
The use of the ® symbol in South Africa

In South Africa, the use of the ® symbol, the word “registered” or any other representation indicating that a mark is registered in South Africa when it is in fact not is a criminal offence.  However, it is not an offence if the relevant representation is used in conjunction with words, no less prominent, indicating that the representation references registration of the trade mark in another country.  It is also not an offence to use a representation indicating registration where it is used in relation to a mark that is registered in another country and the relevant goods are to be exported to that country from South Africa.

Use of marking across multiple countries

Where a business supplies its goods or services to multiple countries, the laws of each country should be considered where those goods or services are supplied using trade mark marking.  This of course complicates matters, especially for goods producers who produce, label and package their goods in one country but supply the goods into multiple countries – they may be required to produce different labelling and packaging for different countries.

As a general rule, if a business intends using the ® symbol or any other symbol or reference indicating that the mark is registered, the mark should in fact be registered in all countries where the mark is to be used.  The use of the ® symbol may however necessitate multiple labelling or packaging lines where the ® symbol cannot legally be used in a particular country.  Of course, local exceptions or peculiarities may apply, as in South Africa.

One way of avoiding multiple packaging or labelling lines would be to use the TM symbol instead.  It is generally accepted internationally to indicate that the user claims trade mark rights in the mark, but not necessarily registered rights.  Again, this is a general rule and the situation in a particular country could differ.

Our office, together with our network of global correspondents, is well placed to advise on your particular situation.



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