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Monday, 28 May 2012

To ™ or not to ™? A reader writes ...

As every Kat knows,
TM stands for
transcendental meditation
Much-loved favourite question returns. The IPKat's friend Bansi Pattni has written in with a question which members of the blog team get asked quite often in one form or another, so this Kat thought it was time to open it up to the public rather than leave it in the murky realm of private correspondence. Writes Bansi:
"I am currently working for a company in the Netherlands and I am attempting to write some guidelines for the use of registered trade marks within the company. While doing so, I have come across wordmarks for computer programs which are not registered but which the company considers as its trade marks. The word marks are distinct and have the possibility of being registered.  However, they are only used internally within the company so there seems to be no incentive to register them. In the event that one of these wordmarks is used in marketing material or client reports, I was thinking of suggesting the use of the ™ symbol.

After doing some research I found that, in general, US sources seem to advocate the use of ™ for unregistered trade marks whereas UK sources state that the use of ™ implies the trade mark is unregistered but does not speak of where it can be used and if it really should be used. In short, internet sources and textbook answers are not sufficient and neither is the opinion of just one professional.

There appear to be no set rules on whether to use ™ or not so I was hoping you may be able to provide me with your own professional opinions on whether ™ should be used for unregistered trade marks. I am also curious to know how its use is received by the IP community in different countries".
This Kat’s position is that, in the jurisdictions with which he is most familiar, the use of ™ is not explicitly controlled by statute or case law and that it is no more than an indication that the business that uses it regards the sign to which it is appended as being a trade mark even though it may not have been registered as such – and even if no application has been made to register it.

The bigger the 'TM', the more
difficult it is so miss ...
Be that as it may, use of the ™ may confer some benefits. In the first place, where the distinctive character of an unregistered sign is being contemplated in the course of registration proceedings, it often happens that an applicant’s mark is refused registration on the basis that the relevant consumer, seeing it, would not realize that it was a trade mark (rather than an advertising or promotional slogan, a description of goods or services or as an ornament or embellishment of the packaging). If such a sign is however accompanied by a ™, it may be more difficult to draw the conclusion that the relevant consuming public would not consider it to serve a trade mark function.

Additionally, in the event that an action for passing off or unfair competition is brought in respect of an unregistered sign which is followed by a ™, its presence may influence the decision whether to grant provisional relief and, if the plaintiff succeeds, the flagrant nature of the infringement and therefore the scale of the damages awarded.

Merpel says, whatever else may be said about ™s, they’re not very pretty. There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?

But what do readers think? Let’s be hearing from you!

Other pleasures represented by the letters TM here, here and here

12 comments:

Hastings Guise said...

"There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?"

Merpel is a genius! This is a great idea and the possibilities for international collaboration are endless (I'm thinking Paris, Madrid, perhaps Nice which is also very nice at this time of year...)

Let's make it happen!

Ventsi Stoilov said...

The issue of the using of TM sign is very common everywhere. In Bulgaria, as in the UK , there was no legal basis for the using of TM. The sign which is being used here in the case of registered marks is R.

In practice there is understanding that TM is an indication of the presence of a mark, no matter whether it is registered or not. Moreover, in Bulgaria the status of an unregistered mark was officially recognized by the law in 2010. However, there is common use of TM, perhaps by analogy with the US practice.

I support your idea of ​​an official depository of signs used as unregistered trade marks. If I needed to elaborate it I would add the requirement for submission of minimum evidences of actual commercial use of the mark. This is essential for protection of unregistered trademarks.

I wonder what OHIM would think about that idea. As far as I know they have a surplus in your budget. Whether they will be willing to spent part of their money for such a database of unregistered trademarks. Interesting.

ex-examiner said...

I can foresee a problem where documents are intended for circulation in more than one jurisdiction.

In the early 1990's I was asked if "Z80" was a trade mark or a registered trade mark, and turned to the manuals I had got for my Amstrad PCW (which I knew used the Z80 microprocessor).

A UK-orginating manual referred to it as a Trade Mark, whereas US-originating manual referred to it as a registered trade mark.

Anonymous said...

Creating a set of norms for use of the TM sounds like a task for INTA --

John H said...

I've always worked on the basis that it does no harm, and may do some positive good - even if just in "warding off" potential imitators.

Love the idea of a register of unregistered trade marks, though. Obviously they'd need to be open to careful inspection and potential challenge from owners of other unregistered rights...

MIAU said...

I must say this is a rather complicated issue on a country as Portugal where there are specific legal rules regarding marking. Here it is an administrative offense the use of the words "Marca Registada" or "M.R." or the symbol "R in a circle" if the user is not legaly entitled by way of a trade mark registration in force. So what can I say about the idea of a register of unregistered signs?!! Great!!

David_Spector said...

Your "kat" humour misspelled Transcendental Meditation, a trademarked term, in lowercase! For shame. Even the abbreviated form, TM, is trademarked:

TM(tm)

And your blog does not support the TM symbol! And your blog has a very bad CAPTCHA!

Jeremy said...

David Spector -- thanks for your comment. I agree with you regarding the Captcha, over which sadly I have no control. As to the rest ...

1. In the EU and the UK, the only registered trade marks for transcendental meditation are for figurative marks, not for the words themselves. Curiously, an attempt has now been made to register the words alone -- but not for transcendental meditation. The services for which registration is sought include "legal services".

2. My blog doesn't support the TM symbol? Then how come I see it when I go online? Is it the power of suggestion?

Hastings Guise said...

I'm confused. Merpel was joking about the unregistered register, right?

Maybe my irony detector was giving false positives...

Merpel McKitten said...

A Kat confesses ...

I was only joking about the register of unregistered rights. I thought it mildly funny at the time but, now that is beginning to be taken seriously, it seems a good deal funnier.

I apologise to anyone who has been misled by my humour.

Anonymous said...

TM: Totally Meaningless

Anonymous said...

I found this on the DPMA website:

What is the meaning of the ® and TM symbols?

You may use the ® symbol (for "registered") only when your trade mark has been registered. You are not obliged to apply this symbol to your trade mark.

The "TM" symbol (for "trademark") has its legal background in Anglo-American jurisdictions.


It seems that the German Patent system is not a fan of the symbol...

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