To ™ or not to ™? A reader writes ...

As every Kat knows,
TM stands for
transcendental meditation

Much-loved favourite question returns. The IPKat's friend Bansi Pattni has written in with a question which members of the blog team get asked quite often in one form or another, so this Kat thought it was time to open it up to the public rather than leave it in the murky realm of private correspondence. Writes Bansi:

"I am currently working for a company in the Netherlands and I am attempting to write some guidelines for the use of registered trade marks within the company. While doing so, I have come across wordmarks for computer programs which are not registered but which the company considers as its trade marks. The word marks are distinct and have the possibility of being registered.  However, they are only used internally within the company so there seems to be no incentive to register them. In the event that one of these wordmarks is used in marketing material or client reports, I was thinking of suggesting the use of the ™ symbol.

After doing some research I found that, in general, US sources seem to advocate the use of ™ for unregistered trade marks whereas UK sources state that the use of ™ implies the trade mark is unregistered but does not speak of where it can be used and if it really should be used. In short, internet sources and textbook answers are not sufficient and neither is the opinion of just one professional.

There appear to be no set rules on whether to use ™ or not so I was hoping you may be able to provide me with your own professional opinions on whether ™ should be used for unregistered trade marks. I am also curious to know how its use is received by the IP community in different countries".

This Kat’s position is that, in the jurisdictions with which he is most familiar, the use of ™ is not explicitly controlled by statute or case law and that it is no more than an indication that the business that uses it regards the sign to which it is appended as being a trade mark even though it may not have been registered as such – and even if no application has been made to register it.

The bigger the 'TM', the more
difficult it is so miss ...

Be that as it may, use of the ™ may confer some benefits. In the first place, where the distinctive character of an unregistered sign is being contemplated in the course of registration proceedings, it often happens that an applicant’s mark is refused registration on the basis that the relevant consumer, seeing it, would not realize that it was a trade mark (rather than an advertising or promotional slogan, a description of goods or services or as an ornament or embellishment of the packaging). If such a sign is however accompanied by a ™, it may be more difficult to draw the conclusion that the relevant consuming public would not consider it to serve a trade mark function.

Additionally, in the event that an action for passing off or unfair competition is brought in respect of an unregistered sign which is followed by a ™, its presence may influence the decision whether to grant provisional relief and, if the plaintiff succeeds, the flagrant nature of the infringement and therefore the scale of the damages awarded.

Merpel says, whatever else may be said about ™s, they’re not very pretty. There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?

But what do readers think? Let’s be hearing from you!

Other pleasures represented by the letters TM here, here and here