R in a circle ® – what’s allowed and what isn’t?
The “circled” or “enclosed” R is extremely popular and is found on many (supposed) trade marks in Germany as well. This is understandable, as the ® symbol makes the name or logo to which it is affixed look official and may even stop imitators from copying the name or logo.
But what is behind the circled R in legal terms? In German law, not much in fact, at least at first sight. The R in a circle comes from US law and indicates that a trade mark is registered with the US trade mark office, the USPTO. Use of the ® symbol confirms the mark’s full trade mark protection. German law does not recognise this confirming effect by using the ® symbol (or by any other symbols) – and does not require any R in a circle on registered trade marks.
But German law does not prohibit the circled R, either. However, in Germany it is recognised that the ® symbol may only be used in combination with signs that are actually registered as trade marks. Otherwise, a breach of competition law exists because the ® symbol misleads the market about protection as a trade mark. Competitors or consumer protection associations can send warning letters or bring legal action against such breaches.
According to case law, it is sufficient if a trade mark application has been filed for the sign embellished with the R in a circle, even if the trade mark has not been issued yet. However, it always has to be borne in mind that the R in a circle should only be placed next to signs that have also been registered as a trade mark in that specific form. If the trade mark owner only has one registered logo also containing a word alongside other components, it can be misleading to just use the word with an R in a circle if the rest of the logo is not shown. Case law only allows an exception from this rule if the “omitted” parts of the mark do not change the trade mark’s “distinctive character”, which is often difficult to judge. Thus it is advisable to always use the mark in its registered form if a circled R is to be appended.
Incidentally, the German Patent and Trade Mark Office (DPMA) also allows trade marks to be registered straight away with the ® symbol, which many trade mark applicants use. Here too, it is important to make sure that the enclosed R is in the correct position. The Federal Court of Justice for example refused trade mark protection for the sign
The court said the enclosed R was misleading since it implied that the words “grill meister” (“grill master”) were registered in isolation as a trade mark, which was not the case. Thus the enclosed R would have to relate to the sign as a whole in order to not be misleading.
In conclusion, it can be stated that although the R in a circle is not derived from German law and is not necessary in Germany, anyone wanting to use the ® symbol should make sure that they hold a registered trade mark with the specific contents shown – or at least that they have a licence for such a mark. Otherwise, there is a risk that competitors will challenge the use, which is not only annoying, but in some situations may be cost-intensive as well.
This article was also published at fashionunited.de under the link.
Any Questions? Please contact: Janina Voogd
Practice Group: Intellectual Property & Media