27 December 2023
by Ahmed Bulbulia
Pallett Valo LLP
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Should a business display its trademark with the R in a circlesymbol ® or the TM symbol TM? What dothese symbols mean? Is it necessary to mark a trademark in Canadawith ® or TM? These are common questionsasked of trademark lawyers. Here is brief guide regarding trademarkmarking in Canada.
What Do The ® and TM SymbolsMean?
The ® and TM symbols,and their respective French equivalents MD (marquedéposée) and MC (marque de commerce) arecommonly used in Canada and foreign jurisdictions. These symbolsare intended to signify that some kind of trademark protection hasbeen afforded to the trademark designated with these symbols.
The ® symbol (or MD) indicates anownership claim to a registered trademark that isregistered with a national or regional trademarkoffice/authority.
If a trademark owner claims trademark rights in anunregistered trademark, then the TMsymbol (or MC) may be used. By using the TMsymbol, the trademark owner is putting the public on notice of theowner's ownership claim to the unregistered trademark.
It is important to know that merely marking a trademark with theTM symbol does not automatically create a trademark norconfer any trademark rights. Whether a sign (i.e. a word, phrase,slogan, logo, or other source identifier) is in fact a trademark,depends on whether that sign meets the criteria for trademarks asset out in the Trademarks Act and under Canadian law.Generally, a trademark cannot be clearly descriptive in nature ofthe associated goods or services, and a trademark cannot be thesame or confusingly similar to another party's trademark. If itis, then merely placing a TM symbol after a sign doesnot in and of itself, make that sign a trademark.
In contrast to the well-recognized ® andTM symbols, other trademark symbols are not usedglobally. For example, in the United States the symbolSM may be used for unregistered trademarks associatedwith a service. However, the TM symbol is broader inscope and may cover both unregistered product trademarks andservice trademarks.
No Marking Requirement in Canada
In Canada, there is no legal requirement to mark yourtrademark with any kind of symbol. Accordingly, it is notnecessary to use any symbol with your trademark in Canada.
In contrast, other jurisdictions such as the United States dohave marking requirements. In the United States, the® symbol means that a trademark is registered withthe US Patent and Trademark Office. There are penalties in theUnited States for improper use of trademark symbols – forexample, using the ® symbol with a trademark that isnot registered in the United States.
As a result, Canadian businesses that use the same trademarkwith their goods sold in both Canada and the USA, but the trademarkis registered in Canada and unregistered in the USA, may choose tostill use the TM symbol with the trademark in bothcountries. By doing so, the trademark is marked consistently onboth sides of the border and avoids possible penalties in theUnited States for misuse of the ® symbol in thatcountry.
Proper Use
If a trademark symbol is going to be used, it is important toplace the trademark symbol correctly. The trademark symbol shouldbe immediately after the trademark. For instance, when a trademarkis followed by a descriptive word or words that do not form part ofthe trademark (e.g. Volvo Electric Cars, TaylorMade golf clubs),the trademark symbol should be placed immediately afterthe trademark and before the descriptive word(s), toidentify the trademark being used.
Generally, it is not necessary to use a trademark symbol withevery display of the trademark. A trademark symbol can be used atleast once within a promotional piece (brochure, website,packaging, etc.), either with the first display of the trademark,or with the most prominent use of the trademark.
Whether or not trademark symbols are used, it is a good practiceto always display the trademark in a distinctive way to clearlyidentify the trademark. Trademarks should be displayed in adifferent font or other different manner (e.g. coloured, allcapital letters, italicized and/or different font size) todistinguish the trademark from the surrounding text.
Advantages
There are advantages to proper use of the ® andTM symbols.
A trademark owner is giving notice to the public that trademarkrights are being asserted in the trademark at issue. Such noticemay cause some consumers to better recognize a business'trademark and enhance the goodwill in that trademark, which isparticularly helpful for enforcing unregistered trademarks.
At the same time, trademark symbols may deter competitors fromadopting the same or similar mark. Notice is given that a trademarkis registered or rights in an unregistered trademark are beingclaimed. Such notice signals that the trademark owner is investedin its trademark and is likely prepared to enforce it.
The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circ*mstances.
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