False representation of a mark as a registered trademark

【Chinese Version】

The Assistant Registrar of trademarks, Chennai filed complaints against four proprietors (Quality Sweets & Namkeens, Kids Fun Foods India Pvt. Ltd. ,Gunal Foods Pvt. Ltd., and SRK Food Products) that used “®” symbol over two common trademarks (“Kidsfu” and “Tofo”). The complaints have been filed under India Trademarks Act section 115(1) for offences committed under section 107(1)(a).

Section 107 lays out penalties for “falsely representing a trademark as registered.” Sub-section (1)(a) penalizes the false representation of a mark as a registered trademark, when the mark is not a registered trademark in fact. Such a false representation is punishable, such as imprisonment up to three years, or fine, or both. It is not a mandatory that a registered trademark must  marked with the  “®”  symbol under India Trademark Law.

However, when a trademark is unregistered or pending application and used symbol “®” with its trademark, it violates the law. An unregistered trademark can use “TM” mark to inform the publics and related competitors as it has been using as a trademark.

The USPTO also has relevant rules regarding the use of “®” symbol. According to the Trademark Manual of Examining Procedure:TMEP 906, 906.01, 906.02, 906.03, 906.04, “®” symbol only can be used after trademark is registered. Therefore, it can’t be used while the trademark is at pending stage or unregistered. Improper use of “®” symbol that is deliberate and intended to deceive or mislead the public is fraud. If a party would like to claim the right to use a trademark, he/she can inform the public that the trademark is a “common law” mark by using “TM” mark or “SM” (service mark) mark. Since United States is based on “First to use” instead of “First to register”, even a trademark didn’t file an application before USPTO, it still has certain protection. However, a party can have a complete trademark right only by filing application before the USPTO.

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On the other hand, TIPO also has similar regulation as USPTO for “®” symbol. In accordance with Taiwan Trademark Act Article 35-3

A trademark may, if registered, be displayed with the words “registered trademark” or the internationally used symbol for registration (the letter R enclosed within a circle).

A “®” symbol is referring to an international common mark of a registered mark which represents the mark has been granted to register; “TM” represents as a mark that is being using as trademark that gives no particular meaning that it has been registered or not. Trademark right owner or authorized party must use the mark or symbol based on its trademark status in order to inform 3rd party and avoid any infringement, and further to protect its trademark right.

However, it is important to inform the trademark right owner or user to use the mark or symbol properly to prevent fraud or false representation, otherwise, the party may be punished by laws and regulations.

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