The Industrial Property Code clearly prohibits to use these symbols if a trademark is not registered. In fact, article 127 (criminal and administrative fees) explicitly establishes that:
- Without prejudice to the application of articles 473, 474 and 517 of the Criminal Code, whoever manufactures, sells, exhibits, makes industrial use or introduces into the country items infringing a valid industrial property title, pursuant to the rules of the present code, shall be punished, at the opposing party’s request, by a fine up to 1.032,91 Euros.
1-bis. Anyone who refuses, without justified reason, to answer the Judge’s questions, according to article 121 bis, or gives him false information shall be punished by half-reduced penalties contained in article 372 of the Criminal Code.
- Anyone who applies to a good untruthful words or indications, intended to create the impression that the product is covered by a patent, industrial design, model or a topography, or that the trademark is registered, shall be punished by an administrative sanction from 51,65 Euros to 516,46 Euros.
- Unless the act constitutes a criminal offence, the use of a registered trademark after the relevant registration has been declared null, when the nullity action determines the unlawfulness of the use of the trademark, or suppresses the trademark of the manufacturer or of the trader from whom he has received the products or the goods for commercial purposes, shall be punished with the administrative sanction up to 2.065,83 Euros, even if no third party has been harmed.
Therefore, only when the trademark is actually registered then it is possible to label it with the symbol ®.
The use of it (or other equivalents) to indicate a registered trademark is optional in almost all countries in the world.
There are only some exceptions (such as Chile, China, Costa Rica, Cuba, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Peru and Zaire) where such symbol is compulsory and, if not used, it may result in a fine or, in the worst cases, even in the impossibility to act against possible counterfeiters.
The use of the symbol ® (or equivalent expressions) next to a registered trademark on products, labels, packaging and advertisement is always advisable only after the right is granted and should be valid only in relation to the territory where such sign has been given protection as a registered trademark.
Such usage can serve as a deterrent against possible counterfeiters (who cannot claim to have imitated the trademark in good faith while being unaware of its registration) and in other situations, in particular when the trademark is increasing its reputation and runs the risk to lose its distinctive character (genericide process).
In the United States, for example, the failure to use the ® makes it hard to obtain damage compensations in counterfeiting legal actions. On the contrary, the misuse of this symbol (such us next to not yet registered trademarks) can cause rather severe sanctions (also criminal ones).
Conversely, in Italy only financial penalties are established in these cases.
Lastly, it is interesting to recall that the German Federal Court in 2009 has sanctioned as an act of unfair competition the use of the symbol ® associated to the trademark THERMOROLL (Az. IZR 219/06) by an economic agent who was unable to prove the ownership of a trademark registration as well as a license to use such trademark.
As an alternative, in case a trademark hasn’t been registered yet or if it has been filed (and until it gets to be granted), it can be effectively labeled with the symbol ™ showing a right as de facto/commercially used trademark, or with the wording “filed trademark”: this right is always limited only to the products/services protected and geographically restricted to those territories where such products/services are widespread.
These signs can be placed next to the trademark in any position. Usually, it is common practice to place them at the end of the mark in the top-right corner, in order to convey that everything preceding it is protected as a registered trademark or de facto trademark/pending application.
Besides the symbols ® and ™, the meaning and use of the symbol ©, related to the indication of copyright should be also clarified. In fact, said right is given to the owner (author) regardless of any formality, therefore its use is always advisable, also in order to make the public aware of the presence of such right, thus discouraging the copy where possible.
Therefore, it is possible to show on websites or flyers or brochures the wording “© year, owner – All rights reserved”.
So, if in Italy the risk to wrongly use the above-mentioned symbols may not scare the most “brave”, it is not the same in other countries in the world, where there is a higher sensitiveness and strictness about this topic: companies having branches abroad should pay specific attention to these matters as each country applies its own regulations – and therefore its own sanctions.
