Caution While Using (R) Symbol on Product for Export

Trademarks are applied on goods to distinguish them from goods of the competitors. To protect trademarks, proprietors register their trademark and use the mark with the symbol ®. A difficulty arises in this case because trademark registration is territorial in nature i.e. it must be registered in each country separately. When good are meant for export, the trademark owner, generally supplies the goods with the trademark as it appears in the home country and when the mark is registered this includes the symbol ®. Issues can arise when such products are exported to countries where the trademark is not registered.

In a recent case, the German Federal Supreme Court held that the use of ® symbol could be misleading, if the mark is not registered in Germany. This particular judgment can be applied uniformly to all countries in Europe. If, for example, an Indian exporter has products, which are branded with the trademark that is registered in India and bears the ®symbol, unless the mark is registered in the specific country in which it is exported or as a community trademark in Europe, it may be held that the use of the ®.symbol may be considered misleading and a competitor may obtain injunctive relief against such use.

Exporters exporting goods outside India must, therefore, be cautious on two counts:

Ensure that the trademark, applied on the goods meant for the country to which it is exported, is registered in that country and
Ensure that unless this is done they should not use the ®on either the goods themselves or in advertising of the goods in the country of export.
In any event exporters must take note that before exporting their products to a particular country, the trademark used by them must be at least applied for registration in that country. Then, it is advisable to use the more innocuous symbol TM.

It is, in fact, wiser to make this application before the initial talks of export or appointing of importers occurs.