This article was originally published on IAM Media.
A trademark symbol is a generally accepted designation used by trademark owners as a warning sign alongside their trademark. It is intended to show that a specific designation is registered as a trademark (or is in the process of being applied for as such). By its presence, it warns that the use of the trademark without permission is prohibited.
The symbol's many advantages
There are multiple benefits in using a trademark symbol in Russia. For example, it offers advertising advantages in drawing a consumer's attention to both the product or service, and to the manufacturer or provider. The use of this warning sign next to a trademark in printed publications and other advertising media highlights the mark itself, as well as the goods or services being offered, and it can influence the consumer to choose a product over others. It confirms the distinctiveness of a designation and serves to single out the mark from the separate information and data about the right holder and its commercial designation. Moreover, it encourages consumers to acknowledge the identified designation as a trademark, thereby contributing to future recognition.
According to the Paris Convention for the Protection of Industrial Property of 20 March 1883: "No indication or mention of the patent, of the utility model, of the registration of the trademark, or of the deposit of the industrial design, shall be required upon the goods as a condition of recognition of the right to protection."
That is, the convention does not require the use of warning signs, but it does allow for it.
Specifics vary among countries, but national laws provide clear descriptions of what their warning symbol should be. The most common symbols are R (the letter by itself or as ®) and ™. The terms 'registered trademark' or 'trademark' can also be used in some countries, or translated as such in non-English speaking countries, for example marque deposee, marca registrada, Schutzmarke, Marke ges. Gesch and Warenzeichen,as well as their abbreviations (MD, MR, WZ, respectively).
Trademark symbols in Russia
According to Russian law, a trademark owner has the right to use any of the following designations:
- товарный знак ('trademark' in Russian); and
- зарегистрированный товарный знак ('registered trademark' in Russian)
An owner is not obliged to inform consumers about its exclusive rights to the trademark, but can choose from the above if it wishes to. A trademark symbol claiming protection can only be placed next to a trademark duly registered in Russia.
In many countries, brand owners use 'TM' or '™' to indicate that they regard a specific word as a trademark, even if it is not registered. The use of such designations is neither forbidden nor regulated by Russian law. They perform only an informative function.
The unlawful use of warning symbols for a trademark that is not registered in Russia entails criminal liability. According to the Criminal Code and depending on the circumstances (eg, the number of participants in the offence, the amount of damage ), punishment can vary from a fine of up to Rb 1 million (approximately $13,300), to performing compulsory / corrective works or imprisonment (for up to six years), with or without a large fine .
The use of a trademark symbol alongside an unregistered mark can also be regarded as an act that misleads consumers.
Russian law specifically states that a trademark owner has the right to use trademark symbols. Whether a licensee or an owner's related company (with written permission) can use a warning sign with the owner's registered trademark is, however, an open question. Strictly speaking, the law explicitly extends the right to the trademark owner only, so the use of a trademark symbol by others could create confusion or even mislead consumers. On the other hand, if there is an exclusive licence, it is not clear why a licensee should not be able to use a registered trademark symbol as well.
In many countries, a licensee can indicate that a mark is registered with the ® with the accompanying note: "Registered trademark used under licence." Similarly, in Russia, when a licensee shows that a mark is registered, it is advisable to indicate information about the registered owner of the trademark on the product packaging and mention use of trademark under a licence agreement. However, the courts in Russia have yet to comment on the suitability of this approach.
In some cases, infringers have argued that the absence of a warning symbol near a trademark is a mitigating circumstance. Russian courts, however, have ruled that this is untenable, since the right holder is not obliged to employ trademark symbols.
Using a trademark symbol clearly has its benefits. When considering whether and how to do so in Russia, as with anywhere else, it is worth carefully reviewing the national legislation in order to avoid risks and undesirable consequences.
If you would like to discuss this article further or have any specific questions about it, please contact the author or a member of our Trademarks, Brands & Designs Group.