Can You Use the Trademark Registered ® Symbol Before Your Trademark Is Registered?

Quick Answer: Can You Use the ® Symbol Before Trademark Registration?

No, you should not use the ® symbol before trademark registration in India to represent a trademark as registered before registration is granted. Under Section 107 of the Trade Marks Act, 1999, falsely representing a trademark as registered may attract a monetary penalty. The ™ symbol can generally be used to indicate a claim to trademark rights before registration.

Understanding the Difference Between ® and ™ Symbols:

The ® and ™ symbols serve different purposes in trademark use in India. The ® symbol indicates a registered trademark and should be used only after registration is granted. The difference between ® and ™ symbols is that ™ generally indicates a claim to trademark rights, even if the mark is unregistered or its application is pending. However, using ™ does not itself establish registration, guarantee exclusive rights, or confirm that the mark is legally protected.

Is It Legal to Use the ® Symbol Before Trademark Registration in India?

No, using the ® symbol to represent an unregistered trademark as registered is not permitted in India. The symbol communicates registered status, so businesses should not use it merely because they have filed an application or received an application number. Therefore, using the ® symbol before trademark registration in India should be avoided.

The same principle applies when an application is under examination or facing opposition. Businesses should verify the trademark's current status before displaying the symbol on product packaging, websites, advertisements, or business documents.

What Does Section 107 of the Trade Marks Act, 1999, Say?

Section 107 of the Trade Marks Act, 1999, addresses the false representation of a trademark as registered. It applies when a person falsely claims that a trademark is registered, represents an unregistered part of a mark as separately registered, or claims registration for goods or services that are not covered by the actual registration.

For example, displaying the ® symbol beside a brand name while its trademark application is still pending may amount to a false representation of registration. Similarly, a business should not claim registered protection for goods or services beyond the scope of its actual registration.

Under Section 107(2), as amended by the Jan Vishwas (Amendment of Provisions) Act, 2023, the penalty for misuse of the ® symbol may be a monetary penalty, subject to the applicable statutory conditions. The penalty is calculated at 0.5% of total sales or turnover, or gross professional receipts, as applicable and computed in the audited accounts, or Rs 5 lakh, whichever is less. The amended provision also provides for an adjudicating officer mechanism.

Businesses should ensure that their trademark registration claims accurately reflect the status and scope of their registration. The ® symbol should be used only for registered trademarks in India, while the ™ symbol can generally be used for a mark whose application is pending or for an unregistered mark. However, using ™ does not itself confer registration or guarantee exclusive rights.

Can You Use the ® Symbol for Only Some Goods or Services Covered by Your Registration?

A trademark registration in India covers the mark in relation to the goods or services specified in the registration. Therefore, businesses should check the scope of their registration before using the ® symbol or making claims about registered trademark protection.

For instance, a brand registered for clothing should not imply that its trademark registration also covers cosmetics. The registration of a brand name for one category of goods does not automatically extend protection to every product or service offered under that name.

Section 107 of the Trademarks Act, 1999, addresses false claims about the registration of a trademark, including claims concerning goods or services that are not covered by the registration. Businesses should review their registration details and the relevant classes before using the symbol in product packaging, advertising, websites, or other commercial materials.

What Are the Consequences of Misusing the ® Symbol?

Misusing the ® symbol may create legal and commercial risks for businesses in India, depending on the circumstances. The potential consequences include:

• Legal penalties: Where the conduct falls within Section 107 of the Trade Marks Act, 1999, a false representation of trademark registration may attract a monetary penalty under the applicable statutory provisions.
• Misleading customers: Using ® on an unregistered trademark may give customers the impression that the mark has been officially registered.
• Incorrect registration claims: Using ® for goods or services not covered by the registration may misrepresent the scope of the trademark’s protection.
• Reputational damage: Inaccurate claims about trademark registration may undermine customer trust and affect business creditability.
• Compliance issues: Businesses may need to correct product packaging, websites, advertisements, and other materials that display the symbol incorrectly.

To minimize these risks, businesses should verify their trademark's registration status and the scope of protection before using ®.

Can You Use the ™ Symbol While Your Trademark Application Is Pending?

Yes, you can generally use the ™ symbol while your trademark application is pending in India. The symbol indicates that you are claiming a word, logo, or other mark as a trademark. Unlike the ® symbol, its use does not depend on the trademark being registered. Therefore, the use of the ™ symbol before registration is generally permissible.

Businesses may use ™ after filing a trademark application and while it is under examination, published for opposition, or awaiting a decision, provided the mark is being claimed as a trademark. The symbol does not mean that the application has been approved or that registration is guaranteed.

Using the ™ symbol does not automatically grant exclusive rights over a brand or guarantee that the mark will be registered. The extent of legal protection depends on factors such as the mark’s distinctiveness, use, and the applicable trademark law. Businesses should use the ® symbol only after registration has been granted and should verify the registration status before making claims about registered trademark rights.

Does Using the ™ Symbol Protect Your Brand in India?

Using the ™ symbol indicates that a business is claiming a word, logo, slogan, or other mark as a trademark. However, the symbol itself does not create trademark registration or guarantee exclusive rights over the mark. In other words, does the ™ symbol provide legal protection? Not by itself.

The extent of legal protection available to a brand depends on factors such as the distinctiveness of the mark, its use in trade, the rights established by the business, and the applicable provisions of trademark law. An unregistered trademark may receive protection in certain circumstances, including through a passing-off action where the relevant requirements are met.

Businesses planning to protect a brand should consider conducting a trademark search before adopting the mark and filing an application where appropriate. They should also retrain relevant evidence of use, such as dated invoices, packaging, advertisements, and sales records.

Using ™ can communicate a claim to trademark rights, but businesses should not treat it as a substitute for registration or a guarantee that the mark can be protected against every competing use.

When Can You Start Using the ® Symbol?

You can start using the ® symbol once trademark registration has been granted by the Trade Marks Registry in India. Under Section 23 of the Trade Marks Act, 1999, registration follows completion of the prescribed process, including the resolution of any opposition in the applicant's favor, where applicable.

Before using the symbol, verify the registration status and confirm that it covers the relevant goods or services.

How to Check Whether Your Trademark Is Registered?

You can perform a trademark registration status check through the official IP India website by following these steps:

• Visit the official portal: Open the eRegister – Trade Marks portal to check application details or use Public Search – Trade Marks to search for a mark.
• Complete verification: Enter the required details and complete the CAPTCHA or other verification steps displayed on the portal.
• Enter your application details: Provide your trademark application number. If you do not know the number, use Public Search to find the application by trademark name or other available search details.
• Check the application status: Review the displayed status. A status such as New Application, Marked for Exam, Objected, or Accepted and Advertised does not, by itself, mean that the trademark is registered.
• Verify registration details: Confirm the proprietor's name, trademark class, application date, and the goods or services covered by the registration.
• Download the registration certificate: If the trademark status is Registered, check the eRegister portal for the registration details and available certificate.

Common Mistakes to Avoid When Using Trademark Symbols:

Businesses should avoid the following mistakes when using trademark symbols in India:

• Using ® before registration: Do not use ® merely because a trademark application has been filed.
• Confusing ™ with ®: Remember that ™ indicates a claim to trademark rights, while ® signifies registration.
• Ignoring registration status: Verify the trademark’s current status before using ®.
• Overstating protection: Do not claim registration for goods or services outside the registered scope.
• Assuming registration is guaranteed: Filing an application does not ensure approval.
• Using outdated information: Updates websites, packaging, and promotional materials when registration status changes.
• Ignoring legal requirements: False representation of registration may attract penalties under Section 107 of the Trade Marks Act, 1999.

Conclusion:

Understanding the rules governing the ® symbol before trademark registration in India is important for businesses seeking to protect their brand identity. The ® symbol should be used only after trademark registration has been granted, as falsely representing a trademark as registered may attract a penalty under Section 107 of the Trade Marks Act, 1999 . The ™ symbol can generally indicate a claim to trademark rights before registration, but it does not guarantee exclusive rights. Businesses should verify their trademark registration status before using ® on product packaging, websites, advertisements, or other business materials.

Frequently Asked Questions (FAQs) –

Q.1. Can you use the ® symbol before trademark registration?

No. The ® symbol should be used only after trademark registration has been granted in India.

Q.2. What does the ® symbol mean?

The ® symbol indicates that a trademark is registered. Its use should reflect the actual registration status and scope.

Q.3. Can I use ® after filing a trademark application?

No. Filing an application or receiving an application number does not mean that registration has been granted.

Q.4. What does Section 107 of the Trade Marks Act, 1999, cover?

Section 107 addresses false representations about trademark registration, including claims concerning unregistered marks and goods or services outside the registration's scope.

Q.5. Can I use ® for all products sold under my brand?

The use of ® is permitted only if the registration and its applicable scope support the claim. Registration for one category of goods does not automatically cover every product sold under the brand.

Q.6. How can I verify whether my trademark is registered?

Check the trademark status and registration details through the official IP India website using the relevant application or registration number.

Q.7. How can we help you with trademark registration?

We can assist you with trademark searches, application preparation, filing procedures, and guidance on trademark registration requirements in India.