A trademark symbol is a well-acknowledged indication that trademark owners use with their brand as a warning notice. Its purpose is to demonstrate that a certain designation has been registered as a trademark (or is in the process of being applied for as such). Its existence serves as a reminder that using the trademark without permission is illegal.
The symbol’s many advantages
In Russia, there are numerous advantages to using a trademark symbol. It has advertising benefits, for example, in that it draws a consumer’s attention to both the product or service and the manufacturer or provider. The placement of this warning sign next to a trademark in printed publications and other advertising media draws attention to the mark as well as the goods or services on offer, and it can persuade consumers to choose one product over another.
It confirms a designation’s distinctiveness and helps to distinguish the mark from other information and data about the right holder and its commercial designation. Furthermore, it encourages consumers to recognize the identified designation as a trademark, aiding future recognition.
“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,” according to the Paris Convention for the Protection of Industrial Property of March 20, 1883.
That is, the convention does not require the use of warning signs, but it does allow for it.
Trademark symbols in Russia
According to Russian law, a trademark owner has the right to use any of the following designations:
- R;
- ®;
- ‘trademark’ in Russian; and
- registered trademark’ in Russian
An owner is not required to inform consumers about its exclusive trademark rights, but it may do so if it so desires. Only a trademark symbol claiming protection can be displayed next to a trademark that has been properly registered in Russia.
In many countries, brand owners use the letters ‘TM’ or ‘TM’ to indicate that a word is a trademark, even if it is not registered. Russian law neither prohibits nor regulates the use of such designations. They only serve as a source of information.
The use of warning symbols for a trademark that is not registered in Russia is illegal, and it is punishable. According to the Criminal Code, punishment can range from a fine of up to Rb 1 million (approximately $13,300) to performing compulsory/corrective works or imprisonment (for up to six years), with or without a large fine, depending on the circumstances (e.g., the number of participants in the offense, the amount of damage).
The use of a trademark symbol alongside an unregistered mark can also be regarded as an act that misleads consumers.
A trademark owner has the legal right to use trademark symbols, according to Russian law. However, whether a licensee or an owner’s related company can use a warning sign with the owner’s registered trademark (with written permission) is an open question. Because the law expressly grants the right to only the trademark owner, the use of a trademark symbol by others may cause confusion or even mislead consumers. If an exclusive license exists, however, it is unclear why a licensee should not be allowed to use a registered trademark symbol as well.
A licensee can indicate that a mark is registered with the ® in many countries, along with the note “Registered trademark used under license.” In Russia, when a licensee shows that a mark is registered, it is recommended that information about the registered owner of the trademark be included on the product packaging, as well as mention that the trademark is being used under a license agreement. The Russian courts, on the other hand, have yet to comment on the appropriateness of this approach.
In some cases, infringers have argued that the absence of a warning symbol near a trademark is a mitigating circumstance. Russian courts, however, have ruled that this is untenable since the right holder is not obliged to employ trademark symbols.
Using a trademark symbol clearly has its benefits. When considering whether and how to do so in Russia, as with anywhere else, it is worth carefully reviewing the national legislation in order to avoid risks and undesirable consequences.
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