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German-language websites, catalogs and flyers also often use the ® (Registered) or TM (Trademark) symbols in the company name or product name. With photos, diagrams or advertising texts just like to the conclusion of the Website – gladly on the imprint side – then still the symbol © (copyright) is found. What are these symbols all about?? When is their use permissible? Where incorrect use threatens a warning notice?
R in a circle ®: Registered
The symbol ® – the R in a circle – originates from the trademark law of the USA. It shows that the trademark is registered (Registered in U.S. Patent and Trademark Office) is. Thus, in order to use the ® symbol, it is not sufficient that the trademark has been applied for but not yet registered in the official trademark register.
If the registration indication by the ® symbol is missing, the consequence under U.S. trademark law is that the trademark owner can only claim damages from the trademark infringer once the latter has gained actual knowledge of the trademark registration – for example, by means of a warning letter accompanied by an excerpt from the trademark register. German trademark law does not have this prerequisite for damages: Here, the trademark owner can claim damages from the trademark infringer even if the latter did not know that he was infringing a registered trademark by his actions.
According to German trademark law, it is permissible, but not required, that a registered trademark be marked with the ® suffix. The R in the circle has above all an advertising effect: It signals that a formal trademark protection exists – and thereby possibly also deters imitators and copycats.
It is important that the ® is always placed after the complete sign as it is registered in the trademark register. Particularly in the case of word-picture marks, it is important to ensure that the ® is not only placed after the word element, but after the complete mark.
Critical are those cases where the ® is used in connection with an actually registered trademark, but where the nature and scope of the trademark is deceived.
This applies, for example, to advertising with the ® symbol, which gives the impression that a powerful word mark exists, while in fact only a word-picture mark with little distinctive character is registered in the trademark register. This is what the German Federal Court of Justice decided in its decision of 17.10.2014 "grill meister", Az. I ZB 11/13 that a word-picture mark can be deceptive if it contains the symbol "R in a circle" in its graphic presentation and this is only assigned to a component of the mark for which there is no separate trademark protection. Here it was about a graphic applied for as a word-picture trademark, which showed a sausage on top, the word "grill" with the ® addition underneath and the word "meister" underneath, all together in a square with red color filling.
Advertising with the ® symbol in connection with goods and services for which the trademark is not registered is also critical. If the design of the advertising creates the impression that a trademark exists for a specific product or service, this can be anti-competitive if the trademark is actually only registered for completely different goods or services.
Misleading is also possible if the trademark protection actually does not exist in Germany but in another country. However, this is also a question of the individual case: Already in the judgment of 13.12.1990 "Pall / Dahlhausen", C-238/89, the ECJ ruled that the sale of goods with the suffix ® in Germany may not be prohibited under UWG if a corresponding trademark is not protected in Germany but is protected in an EU member state. The Cologne Higher Regional Court ruled in a judgment of 27.11.2009, Az. 6 U 114/09, the Federal Court of Justice ruled that advertising with the suffix ® for a trademark registered only abroad (only) misleads the targeted public if the public assumes that trademark protection also exists in Germany.
Whether advertising with the ® symbol violates competition law and can be warned is a question of the individual case.
In the USA, the suffix "TM" after the name is used to identify signs that have already been applied for as a trademark but have not yet been entered in the official register.
These legal principles from US trademark law cannot, however, be transferred to German trademark law without further ado: the Munich I Regional Court (Landgericht Munchen I) ruled that the ® symbol was not protected in Germany in its judgment of 23.07.2003, Az. 1 HK O 1755/03, with the "TM" suffix the same and saw a misleading of the targeted public if the "TM" suffix is used for a sign that has been applied for as a trademark but has not yet been registered. In contrast, the Essen Regional Court, in its judgment of 04.06.2003, Az. 44 O 18/03: According to the legal opinion expressed there – in a different case constellation – the "TM" suffix for a sign applied for merely as a trademark is not misleading.
Caution is therefore required with the addition of the word "TM". It is better to wait until the trademark is entered in the register.
The © symbol, i.e. the letter C in a circle, usually reproduced in conjunction with a year, expresses that copyrights are claimed for a text, photo, piece of music, website, software or database or other work.
Caution: The mere right to use a work is to be distinguished from copyright. For example, anyone who has acquired a license from an image database for a particular photo in order to incorporate the image into their own website may not now use the © in conjunction with their own name: The website operator would be adorning himself with borrowed plumes. Who uses the © without being the author – the photographer, the composer, the author, the programmer – risks a warning notice.
The use of the symbols ®, TM and ©, which originate from Anglo-American law, is by no means prohibited in Germany, but should be done in a well-considered manner. Use in the wrong place or in the wrong context may provoke a warning notice. The use in the right place, on the other hand, can cause an additional advertising effect, make one’s own rights additionally clear and deter free riders with a self-service mentality. How to!