Got this phone call from one of our clients who mainly doing business in Taiwan and China, asking about should they put ® next to their trademark, do they have to put it next to their trademark?

This is a common question, something I hear at least once for every few months.
The simplest answer is: the symbols represent the status of a trademark, in Taiwan and China, if it is NOT a registered trademark. You should not mark your trademark with the ® symbol, you should put a TM symbol instead.

TM stands for trademark. For the “TM” symbol, there is no requirement and you don’t need to file a trademark registration application before you use it. Marking this symbol, basically just a notice or announce of ownership and tell people that you use the designated words, designs, phrase, logo, symbols or a combination of these elements as a trademark when you provide your products to the market. Usually, the trademark holder will switch to the ® symbol after the trademark has been approved to register.

® stands for registered, now I think it is not hard to understand the ® symbol is for the trademark that has been officially registered with the Taiwan Intellectual Property Office or the China Trademark Office. Marking this symbol will be a good way to showing the others that they may infringe your trademark if they use an identical or confusingly similar trademark on the same or similar goods and services

Do you have to mark your trademark with TM or ®?
In Taiwan and China, there is no any requirement that you have to mark these symbols and only a registered trademark will be protected. An unregistered trademark will not be protected even you mark the TM symbol. So it will up to the trademark holder’s decision to mark the symbol or not, and my suggestion is that unless there is a reason not to mark your trademark, it is always better to claim your trademark right.

How and where you put it?
Like I say, you can make the decision that you want to put the symbol or not. But if you are going to put these symbols on your trademark, you have to use the right one in the right place.
In Taiwan, if you mark your unregistered trademark with the ® symbol, this kind of misuse will likely to consider as an unfair competition by using a false or misleading symbol.  The Fair Trade Commission may order you to rectify your conduct or take necessary corrective action. In addition, you may be fined an administrative penalty of not less than fifty thousand no more than twenty-five million New Taiwan Dollars.

In China, neither they have the requirements that order you to put the TM or ® symbol. The China trademark law says clearly only a registered trademark is allowed to mark the ® symbol and ® symbol should mark at the lower right or the upper right corner. If you pass an unregistered trademark off as a registered trademark, you will be ordered to stop your conduct or take necessary corrective action and may be circulated against a notice of a criticism by the local administration and possibly you will be imposed an administrative penalty base on the how much illegal business revenue you gained, if you gained a revenue of fifty thousand RMB or more, you will be fined up to 20% of the revenue. If the revenue is less than fifty thousand RMB or doesn’t even gain any revenue, then the fine will be up to ten thousand RMB.

Applying and registering for a trademark is a surefire way to ensure that you can do business smoothly. Get to know more about the trademark research process.

So if you have any questions on symbols or any trademark and intellectual property related issues, please don’t hesitate to contact us !