False Marking Alert: Could International Product Sales, Shipments, Or Manufacturing Land You In Prison?

Do you manufacture, ship, or sell products abroad that contain the ® trademark registration symbol on the products, labels, or packaging?  If so, did you know that you may face criminal liability, imprisonment, fines, seizure of your products, injunctions, unfair competition claims, damages, and other liability if you failed to register your trademark in the foreign countries where you manufacture, ship, or sell the products?

“False marking” occurs when an unregistered trademark is represented as a registered trademark.  Internationally, the ® symbol is generally perceived to denote an existing trademark registration.  In some countries, it is a crime to falsely indicate that a trademark (or portion of a mark) is registered, or that goods or services are protected by a registered trademark or service mark, when they are not.  Examples of countries that impose criminal liability for false marking include, without limitation: Japan, Korea, Germany, India, and Brunei.  False marking under the laws of Japan, for instance, may result in imprisonment for up to three years.

In addition to potential criminal liability exposure, false marking may also result in severe civil penalties.  These penalties may far outweigh any perceived cost savings associated with a foreign manufacturer or cheaper overseas labor.  For example, China may impose a false marking fine of up to 20% of business volume or double the amount of profit earned, even if products are manufactured in China solely for export.  Chinese courts have imposed false marking fines, product seizures, injunctions, and damages against companies that manufacture goods in China for export, even though they were not selling the goods in China.

Before manufacturing, shipping, or selling products abroad, consult with an experienced trademark attorney about international trademark requirements.  Trademark laws and marking requirements vary from country to country.

If you have already manufactured, shipped, or sold products bearing the ® trademark registration symbol in any countries where the trademark is not registered, immediately consult with an experienced trademark attorney to discuss whether you may face criminal and civil liability exposure, and international trademark options and strategy to mitigate future risk.