Charlotte URMAN Henri Cantin September 19 2022 Which symbol should I use: ®, ™ OR ©? MIIP MADE IN IP | Intellectual Property - International Charlotte URMAN, Henri Cantin Intellectual Property BackgroundUse of IP symbolsAdvantages and disadvantagesAdvice for IP ownersThere are various symbols that represent IP rights, but they must be used wisely. Is it mandatory, recommended or superfluous to use them? Is it necessary to have a strategy? This article answers these questions.BackgroundThe meaning of the most common symbols is outlined below:® – this means "registered trademark" and is applied to trademarks that have been registered and validated by an IP office;™ – this means "trademark" and is applied to trademarks that have not yet been registered by an IP office; and© – this means "copyright" and is applied to creations subject to copyright. It must, in principle, be accompanied by the name of the owner of the work and the year of first publication.In all cases, these symbols are intended to inform third parties of the existence of a right.There is also the "copyleft" symbol (Figure 1), which expresses, in contrast to the © sign, the author's permission to exploit and modify a work that would normally be protected by copyright – for example, some text, a logo, a work of art or a computer program.Figure 1: "copyleft" symbolThe copyleft symbol implies that all works derived from the original work are subject to the same freedoms as the original and therefore inherit copyleft status. In other words, it is the expression of a form of free licence on the creation concerned (in the same spirit as free software systems, which may provide for certain restrictions on a case-by-case basis).Use of IP symbolsSymbols representing the existence of IP rights constitute information communicated to the public and, as such, their misuse may be deemed to be unlawful and misleading.TrademarksMany trademark offices, when examining applications, will object to and refuse to register trademarks that already include the ® sign – this makes sense since the trademark has not yet been registered. While this type of objection can usually be overcome, the submission of a response to the office is mandatory and incurs additional costs.In some jurisdictions, such as Germany and China, the use of the ® sign on a mark that has not been registered will be considered misleading and punishable under unfair competition laws.CopyrightWhile copyright is automatic in some jurisdictions, such as France, there are specific administrative procedures for obtaining copyright in other countries. It is likely that the affixing the © sign in these countries requires prior validation of the copyright application.Advantages and disadvantages The advantages of using IP symbols varies depending on the jurisdictions in which the rights are exploited. In some jurisdictions, the use of IP symbols is not compulsory. This is the case for countries that are signatories to the Paris Convention for the Protection of Industrial Property, article 5 of which states as follows: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.However, this is not the case in every jurisdiction – US law, for example, provides that, without the use of the ® sign, no damages can be obtained in an infringement action, unless the defendant had knowledge of the registration (which must still be proven).The proper use of IP symbols enables the rights owner to:alert third parties to the existence of a right and deter potential infringers;affirm that a sign is considered a trademark and not a commonplace sign and prove that the owner has taken measures to defend it – this is particularly important in the case of a weakly distinctive trademark for which invalidity could be sought on this ground;evidence how the mark is presented to the public – this is particularly important when it comes to proving foreclosure by acquiescence or use of a trademark (eg, in the context of a revocation action for failure to use the mark), especially when distinguishing between use as a company name or sign and exploitation of the mark; andpromote to licensees or future licensees the fact that the sign benefits from protection and impose on them in the graphic charter the indication of this protection in order to further reinforce it.Advice for IP ownersIt is necessary to ensure effective coordination – particularly in the context of exports – between the various departments of a company, especially between the department responsible for printing documentation or packaging and managing the stocks and the department that is able to confirm the status of the right.It is also important that rights owners ask the appropriate questions and decide on the use of IP symbols in full knowledge of the facts and according to the specific context. Rights owners should consider the following questions:For which countries are the products intended?Has the trademark been registered or filed in the country to which it is being imported?Is the work protected by copyright, thus implying the use of the © sign?Does the company have local copyright in place?What proof of use could be provided if necessary, and is it sufficient?Moreover, rights owners should keep an eye on the way in which competitors or opposing parties in use IP symbols – raising the issue of misuse may be helpful in a dispute.For further information on this topic please contact Charlotte Urman or Henri Cantin at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected] or [email protected]). The INLEX IP Expertise website can be accessed at inlex.com.