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Warning Trademark Marking: Kinds, Destination, Use of Unregistered Designations.

June 23, 2017

In accordance with the Paris Convention for the Protection of Industrial Property of March 20, 1883, the placement on the product of any designation or any indication to the registration of the trademark shall not be required for the recognition of the rights. At the same time, such designations as “R” or “TM” in a circle are often found on the goods. Many believe that these designations have an identical meaning, whereas in fact this is far from being true.

The Paris Convention of 1883 does not oblige, but also does not prohibit a bona fide manufacturer to notify the consumer about his exclusive right to a particular trade mark. This is done by placing a corresponding protection mark next to the trademark.

The legislation of the Russian Federation stipulates the following designations for these purposes: the Latin letter R, the Latin letter R in a circle, designation “trademark” or “registered trademark.” The presence of any of these four designations placed next to the trademark indicates that the trademark has been registered on the territory of the Russian Federation.

Thus, the question arises: what do “Trade mark,” “TM” and “tm” designations mean, which are found on the packages of various goods with increasing frequency?

On the territory of our country, such designations can perform only the information function, while in the foreign countries, the phrase “Trade mark” or the abbreviation “TM” and “tm” may mean that the corresponding application for the trademark next to which they are placed on the packaging, has already been filed for registration with the Office. As a consequence, in the event that the legal protection is granted to the designation, the person who uses an identical/similar designation can face the claims on the part of the right holder.

It should be noted that despite the absence of the obligation on the part of the right holder of the trademark to place a warning mark, its indication on the package or the product itself can have several functions simultaneously. For example, such marking notifies about the fact, that the trademark is protected on the territory of the Russian Federation, the exclusive right to it belongs to a particular right holder, and its use without the consent of the latter can lead to serious legal consequences (Article 1515 of the Civil Code of the Russian Federation, Article 14.10 of the Code of Administrative Offenses, Article 180 of the Criminal Code of the Russian Federation). In addition, the application of markings is also of an advertising nature, attracting the attention to both the product and its manufacturer.

The particular attention should be paid to the use of a warning mark. As it was already mentioned above, the legislation of the Russian Federation stipulates its placement with the registered trademarks. At the same time, the unfair manufacturers often place the aforesaid marking on unregistered designations.

It is necessary to know that the Civil Code of the Russian Federation (Clause 5 of Article 1515) stipulates that the person placing a warning mark with respect to the trademark unregistered in Russia shall be liable in the manner stipulated by the legislation of the Russian Federation. In addition, the Criminal Code of the Russian Federation (Clause 2 of Article 180) provides a number of measures for the illegal use of warning markings. Depending on a number of circumstances (the number of the offenses of the law, the extent of the damage, etc.), the offender will bear criminal responsibility, and the measure of punishment shall vary from the penalty payment, the fulfillment of compulsory/correctional work up to the imprisonment for a term of 6 years with a payment of a lumpsum or without it.

Thus, when making a decision on the use of a particular designation without its registration as a trademark, as well as the placement of a warning mark, it is necessary to understand that there are risks both for you and your business. And only well-timed actions on obtaining the exclusive right to the designation of interest in accordance with the legislation of the Russian Federation will help to avoid such risks.

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Anastasiya Kiryuhina

Anastasiya Kiryuhina

Trademark Attorney