Using the ® or ™ symbol in franchising

How a franchise can make everyone else aware of its rights, regarding trademarks, logos and other brand features, can be a legal minefield for the uninitiated. Trademark lawyer Bernard Whyatt of Brand Protect explains the basics.

Registering your trademark gives you the exclusive right to use your mark for the goods and/or services in the country in which you are trading, for example the UK. If you own a registered trademark you can use the ® symbol next to the trademark to warn others against using it. However, using this symbol for a trademark that is not registered is a criminal offence.

A Registered Trademark

  • May deter people using your trademark without your permission or license
  • Makes it much easier for you to take legal action against anyone who uses your trademark without your permission
  • Allows Trading Standards officers or police to bring criminal charges against counterfeiters if they use your trademark
  • Is your property, which means you can sell it, franchise it or let other people have a licence that allows them to use it.

If you use a brand and do not have a registration for that trademark, then you should use ™ to indicate that you are using the sign as a trademark. It is important to advise members of the public that although the mark is not yet registered, you are using that mark as a trademark and are prepared to protect that mark using the tort of passing off.

To be successful in a passing off action, you must prove that:

  • You have used your sign in trade for a period of time
  • You have built up a goodwill in the sign
  • That goodwill has been harmed in some way by the other person's use of the sign

It can be very difficult and expensive to prove a passing off action. We suggest that you register your brands and sub-brands to ensure that you alone use those signs.
A well-protected and strong brand is an essential element of successful franchising, and the use of registered trademarks is fundamental to the process. Registration of a brand as a trademark creates property and, like all property, trademarks need to be built on strong foundations and must be looked after during their lifetime to ensure they continue to deliver value to your business. Bernard Whyatt is a Trademark Lawyer at Brand Protect Ltd, a niche law firm that offers advice and assistance on all aspects of trademark law and practice, especially those of concern to franchisors. With its breadth of knowledge the company is able to advise, not only on the creation of the intellectual property (IP), but also how to retain it. Brand Protect LLP regularly fights for the rights of franchisors in the courts and its clients rely on the company to give them best advice on all aspects of IP law in this country and abroad. Brand Protect LLP works ceaselessly for its clients to enable them to protect their brands in this country and abroad. Brand Protect is always happy to advise on the use and registration of brands, both in the UK and worldwide.