The Berlin Regional Court has prohibited the use of the ® symbol (“R” in a circle”) even though a corresponding registered trademark is not in force.
When using the ® symbol, corresponding TRADEMARK rights must exist!
In preliminary injunction proceedings conducted by Attorney Daniel on behalf of the petitioner before the Berlin Regional Court, the (alleged) trademark owner was prohibited, under threat of statutory penalties, from using the ® symbol (“R” in a circle), even though no corresponding registered trademark is in force.
When the symbol “®” is attached to a mark, the public expects that this mark is registered as a trademark for the user or, at the very least, that the trademark owner has granted the user a corresponding license.
Consequently, the relevant public infers from the inclusion of the ® symbol that the mark in question is a registered trademark with precisely that content (see, e.g., Federal Court of Justice [BGH] in GRUR 1990, 364, 366 – “Baelz”; in GRUR 2009, 888 – “Thermoroll”).
In fact, however, the company logo was not registered as a trademark.
Nor is it sufficient that the respondent has filed an application for such a trademark, since the mere filing of an application does not yet create a trademark!
The use of the ® symbol is therefore only permissible once a trademark has been registered, meaning that prior use constitutes an act of unfair competition. This is because the user misleads the public regarding the scope of (allegedly) existing industrial property rights and thereby engages in a deceptive business practice that is objectionable under unfair competition law (see also OLG Cologne, judgment of Nov. 27, 2009, Case No.: 6 U 114/09 – “® [R in a circle]”; Hanover Regional Court, judgment of October 22, 2013, Case No.: 32 O 29/13).
Even though the ® symbol was visible only in small print on the defendant’s website, it was recognizable as such by the relevant public.
Common symbols “in a circle” include the “C” for copyright and the “R” for a registered trademark; however, in this specific case, any connection to copyright was clearly ruled out, and the assumption that it was some kind of fanciful symbol was also far-fetched, since the symbol was placed exactly where one would expect a ® symbol—namely, attached to the upper right corner of the company logo.
The respondent, represented by counsel, filed a written defense with the Berlin Regional Court after failing to respond to the prior cease-and-desist letter. Since the claim for an injunction remained valid even in light of the arguments presented in the written defense, the 15th Chamber of the Berlin Regional Court issued the requested injunction without an oral hearing.
The grounds for the injunction were established, even though the defendant had already been issued two prior cease-and-desist warnings regarding this matter in close succession. This is because, despite the defendant having already submitted two cease-and-desist declarations, the infringement was still ongoing. There was no response to the third warning, so the plaintiff required immediate and effective protection.
Do not “ignore” a cease-and-desist letter—and be sure to meet the deadline set for you!
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