It is an offence under section 95 of the UK Trade Marks Act 1994 to falsely represent that a mark is a registered trade mark or to make a false representation as to the goods or services for which a trade mark is registered. It is because of this section of the Act that R or Registered Trade Mark must not be used before a registration certificate for a mark has been issued.

There is one exception: if it can be shown that the reference is to registration elsewhere than in the UK and that the trade mark is in fact so registered for the goods and services in question, use of ® and/or Registered Trade Mark is permitted before registration is obtained in the UK. This is see s 95(2) of the Trade Marks Act 1994 and also the decision of the European Court of Justice of December 13 1990 in Pall Corp. v P J Dahlhausen & Co.

So, the advice to clients who have yet to obtain registration of their mark in any country is:

• Do not use ® or Registered Trade Mark
• You can use TM, as this is not considered to indicate that the mark is registered
• After registration, you can then switch to ®, or continue using TM, as this does not lose you any rights. . There are some countries – the US is one of them – where failure to use R once a mark is registered will lose the trademark owner some of his rights, but this does not apply to the UK.