Trademark Marking In Europe: What Symbols To Use And When

Author:Mr Emmanuel Baud, Neil Coulson, Peter D. Vogl and Andreas Ebert-Weidenfeller
Profession:Jones Day

The use of symbols to designate trademarks (registered and unregistered) signals product quality to customers and distinguishes goods and/or services from those of competitors. Symbols frequently used in connection with trademarks and brand names are ®, ", or SM. These indications, however, have their origins in Anglo-American legal systems and may be less common in other European countries. In Germany, for example, the indications "Schutzmarke," "Marke ges. gesch.," or "Wz." are used, while in France, you can sometimes see the indication "Marque déposée" in association with a trademark. While commonly used, there is a danger that trademark marking could constitute a misleading advertisement under the different national laws in Europe. Whether or not to include a marking symbol or reference should, therefore, be assessed carefully on a case-by-case basis. Internationally, ® is generally perceived to mean "Registered" or "Registered Trademark" and to indicate an existing trademark registration. The same applies to indications in certain European languages, such as the German "Schutzmarke," or the older "Wz.," which is short for "Warenzeichen," the old German word for "trademark," or the French "Marque déposée." Use of the indications " to denote a trademark and SM to denote a service mark, although common in the United States (" and SM) and the United Kingdom ("), is less common in other European countries, for example in Germany, meaning that their use could be ambiguous outside the anglophone systems. Indeed, even use of the more common ® could create misconceptions among the relevant consumers. We analyze below the issues that apply to trademark marking on a pan-EU level, principally in relation to misleading advertisements, and then on a national basis, with a focus on the three key European markets of Germany, the United Kingdom, and France. Across the European Union Misleading Advertisements. Can false trademark marking constitute a misleading advertisement? There is some guidance on a pan-EU basis, as all EU member states must implement and apply the European Directives on misleading and comparative advertising 85/450/EEC (September 1984) and 2006/114/EC (December 2006). In general, misleading advertisements are unlawful in all EU member states, taking into account all the features of the advertisement, and in particular of any information it contains concerning the nature, attributes, and rights of the advertiser, such as ownership of intellectual property rights (Art. 3 (c) Directive 2006/114/EC). EU Directives are often implemented into national law and are then construed by the respective national courts. So, while the base provisions of the Directive are the same, there is no set interpretation that would apply across the EU. It is, however, of pan-EU applicability that advertisers should take care with trademark marking to ensure that they do not create an advertisement that could mislead the consumer as to the ownership of intellectual property rights, for example marking a trademark as registered when in fact it is not. Trademark Marking and the Principle of Free Movement of Goods. One feature is common to all EU member states. As stated above, it is reasonable to conclude that an incorrect use of ® in the territory of an EU member state could constitute misleading advertising under the national law of each EU member state. The result could be that the distribution of goods with incorrect trademark marking could be prohibited on a national basis in the respective EU member state. Such a national prohibition, however, could conflict with the principle of free movement of goods within the EU. The EU functions as a single market, and the principle of free movement of goods is one of the "four freedoms" of that single market. This means that quotas and "measures having equivalent effect" are prohibited (Art. 34 Treaty of the Functioning of the European Union, "TFEU"). Case law of the highest court in the EU, the European Court of Justice ("ECJ"), has addressed what measures have "equivalent effect" and how they affect trade within the EU. Relevant to this Commentary, the ECJ case law has addressed false trademark marking. Based on a request for a preliminary ruling by the Regional Court of Munich, Germany, in the case of Pall Corp. v P. J. Dahlhausen & Co. (Case C-238/89, December 13, 1990), the ECJ addressed the question whether the principle of free movement of goods could prevail over national trademark and misleading advertising law. In the Pall/Dahlhausen case, goods produced and marked in Italy and then distributed in Germany bore the indication ® next to the trademark MIROPORE. The trademark was not registered in Germany. Under the German unfair competition law applicable at that time, this should have been regarded as a deceptive advertisement. The ECJ, however, concluded that a provision under national unfair competition law that...

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