Author Archives: Frits van Houtum

When can I use a trademark symbol like ® or ™ next to my trademark?

17 June 2021

Trademark symbols like ® are widely used by companies next to their logo in order to prevent other companies from copying such a mark. However, are these symbols mandatory to use, or are they just optional? And when can companies use these symbols next to their trademark?

The symbols

We like to give you more information in how these symbols are and ought to be used within the European Union (United Kingdom included) as well as the United States.

A brief overview of the symbols is given here below:

™ wordt gebruikt voor een merk dat nog niet is geregistreerd.
® will be used for a trademark that has been registered.
℠ will be used for a service mark that has not yet been registered (United States).
© will be used to notify that a certain non-audio work is protected by copyright.
℗ will be used to notify that a certain audio work is protected by copyright.

™-symbol

The ‘TM’ stands for ‘trademarks’ and this symbol is popular within the United States and Australia, but it does not hold much weight in most countries within the EU. It is mostly used on marks that are not yet been registered as such. Furthermore, this symbol does not poses any legal status within the United States nor the European Union. However, some German courts have determined that this symbol must be used in association with a registered trademark.

®-symbol

This symbol means that the trademark has been registered, as the R in the ® stands for ‘registered’. So the claims that are attached to the ®-symbol are much stronger than the claims that are attached to the ™-symbol. However, it is not mandatory to use the symbol within the European Union, as it does not contain any official legal status. This symbol may only be used when the mark is registered. Throughout most of Europe, the use of the ®-symbol with marks that have not been registered, run the risk of violating the rules on misleading advertisements. So companies need to be assure that their trademark is registered before they decide to use it in their businesses. In contrast to the European Union, trademark owners are required to use the ®-symbol if they want to claim profits or damages in an infringement case within the United States, as the symbol does have an official legal status there.

℠-symbol

This symbol is used for an unregistered service mark, that is used to promote or brand services instead of goods. This mark is generally used within the United States, and rarely seen within the European Union. The ℠-symbol does not contain any legal status within the European Union nor in the United States. If the service mark has been registered, then the ®-symbol is used instead.

©-symbol

This symbol is not associated with trademarks, but with copyright. It means that a certain work is protected by copyright, and may not be copied or used without restrictions. However, trademarks can be protected by copyright as well as intellectual property rights can overlap each other in certain cases. This symbol is not mandatory within the European Union since it is not codified in any EU-law. However, this symbol can be optionally be used in Europe in order to notify third parties of the fact that a certain work is protected by copyright. This symbol can be used to indicate that the author obtains copyright on the particular work within the European Union. However, the ©-symbol was first described by the old Universal Copyright Convention, which indicated that the author has filed a copyright notice for countries that had not acceded to the Berne Convention, like the United States until 1989. Even though this copyright notice is not required in the United States, it still carries evidentiary weight as copyright infringers cannot claim innocent infringement as defence in order to mitigate its damages for works that carry the ©-symbol.

℗-symbol

This symbol is also associated with copyright instead of trademarks. The difference with the ©-symbol is the fact that the ℗-symbol is used for audio works, as the ‘P’ in ℗ stands for ‘phonogram’. These sound recordings have a distinct copyright from that of the underlying work. It was introduced by the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations. Historically, this symbol was used in order to indicate compliance with the legal formalities in order for phonogram producers or performers to gain copyright protection on their phonograms. Such formalities do not exist within the European Union, as producers of phonograms gain copyright on phonograms from the moment they are produced. That means that the use of this symbol is not mandatory within the European Union. This symbol is not mandatory in the United States in order to gain copyright protection on phonograms. However, it does carry evidentiary weight as copyright infringers cannot claim innocent infringement as defence in order to mitigate its damages for works that carry the ℗-symbol. So it can be recommended to use this symbol on phonographic works in combination with the other legal requirements.

Summarizing

Main points to consider:

“TM” stands for “trademarks”.
The ®-symbol has an official legal status in the United States.
The ℠-symbol is used for an unregistered service mark.
Het ©-symbool wordt gebruikt voor het auteursrecht.
The ℗-symbol is used for copyrights, specific for audioworks.

Use the symbols properly. If you doubt about which symbol best matches your trademark or registration, please contact one of our advisors.

Did you know that patents, trademarks and designs go hand in hand?

Lees het gehele artikel

27 May 2021

Even if you have done everything to protect a product, you may miss an intellectual property right. Many conventional offices specialize in trademark and design registration only or in patent registration only. Unfortunately, there is a good chance that you are not fully protected if you only have a registered trademark and / or design or only a patent.

Conventional trademark or patent offices

However, conventional trademark or patent offices (Figure 1) will state that they can refer you to an outside trademark or patent expert if they discover that a particular product cannot be protected by a registered trademark, design or patent. It is then essential that the specialist in the field of trademarks and designs or patents first discovers something that is patent-worthy. That will be a difficult job for the brand and model specialist or patent specialist. Many of them do not specialize in patent law as well as trademark and design law.

Work against instead of supplement

Some Intellectual Property Rights, if not applied for in the correct order, can work against each other rather than complement each other. If a technical invention is patentable, it is important to apply for this patent in advance of all other activities. Also, a patent or design may not be sold before a registration has been filed. This is because no patent right or design right can then be granted.

A trademark attorney will first have to discover something patent-worthy before a client can be referred to a patent attorney. However, a trademark attorney is not specialized in patent law, which means that there is a chance that it is possible to apply for a patent on your product while it went unnoticed by the trademark attorney. The same situation, vice versa, is also possible.

At a full-service agency, patents, trademarks and designs go hand in hand

Fortunately, with a full service agency Patents & Trademarks (fig. 2) patents, trademarks and designs go hand in hand with each other! Your product will always be viewed by both patent and trademark and design experts. This means you are always assured that your product is fully reviewed by all intellectual property specialists. And you can do business with peace of mind while the attorneys take care of adequate protection of your product.

Summarizing

Main points to consider:

At a full-service agency, patents, trademarks and designs go hand in hand.
The correct order for the application for intellectual property rights is important.
LIOC Patents & Trademarks is a full service agency and your product is always viewed by experts in the field of patents and trademarks and designs.
See also our blog “when can I publish my invention“.

Discover how we protect your product and which form of protection best suits your product. Contact one of our advisers and let us advise you.

When can I go public with my invention?

Lees het gehele artikel

19 March 2021

It is often known that an invention must be new to qualify for patent protection. But what exactly does this mean? And what can or can’t I do without harming the novelty?

Novelty requirement in short

An important requirement for granting a patent is that the invention must be new. An invention is new when it is not part of the “state of the art”. An invention has become part of the “state of the art” if it has become public in any way. This can be oral or written, but also because the invention is already in use before the patent has been applied for. It is therefore important that the invention remains secret until such time as a patent application is filed for it and you have obtained an official filing date. This is the only way to prevent your patent application from being rejected, or from being a target in a court invalidity procedure, because you have disclosed the invention yourself.

Publication

I can hear you think: have I made my idea public yet? Can I already talk to an investor? Can I already post something on Facebook or my website?

A patent office checks whether the invention is “new” by means of a search in written publications, especially online and in patent publications. When the invention is made public by means of a Facebook post, this will therefore not be discovered quickly, but it is indeed harmful to novelty. After all, Facebook is a public platform, but even if a patent council has not encountered the publication, this does not mean that the patent is then valid. In an opposition or invalidity action, for example, the patent can still be declared invalid.

When you want to enter into a conversation with a third party, this does not usually count as disclosure, but there is a risk that the other party will make the invention known without you knowing and intended.

Confidentiality Statement

For this reason, it is always wise to have a nondisclosure agreement signed when you want to discuss the invention with, for example, investors, producers, advertisers, etc. In English it is referred to as a so-called NDA. This stands for Non-Disclosure Agreement. We can draw up, develop and advise you on such a statement.

Summerizing

Main points to consider:

Before a patent application is filed:
- always have someone else sign a nondisclosure agreement if you want to discuss the invention with them.
As soon as you have received confirmation of submission from us, you have registered the invention. Now you can feel more confident about promoting it.

If in doubt or if you have any questions about the foregoing, please contact us for advice.