The symbols ® and TM, or their French counterparts MD and MC, are widely recognized symbols that indicate claims to trademark rights. Unlike legislation in the United States and elsewhere, Canadian trademark legislation is silent on the use of these symbols. Nevertheless, using (or not using) them can still have very important legal consequences for owners and licensees of trademarks in Canada.
In general, the symbols TM (meaning “trademark”) and MC (meaning “marque de commerce”) indicate a claim to any kind of trademark right, whereas the symbols ® (meaning “registered”) and MD (meaning “marque déposée”) usually indicate a claim specifically to a registered trademark.
Because these symbols are generally recognized as indicators of trademark rights, using them can be beneficial by promoting public awareness of a trademark. This, in turn, can be very important for obtaining and enforcing unregistered trademark rights, and it may also deter competitors from using the same or similar trademarks.
Using these symbols can also assist with obtaining, maintaining and enforcing trademark registrations. For example, in an opposition or expungement proceeding,
a trademark owner may have to prove use or distinctiveness of a trademark. In numerous past cases, evidence that the trademark has been used with an appropriate symbol has helped to bolster arguments in favour of the owner.
Using an appropriate symbol is particularly important where the public might not perceive a particular mark as a trademark. For example, where a trademark is also all or part of a company’s name, consumers might see use of the trademark only as use of the company’s name. An appropriate symbol can help to show the use and reputation of the trademark. Also, in past cases, use of appropriate symbols has saved trademark registrations from problems in oppositions and expungement proceedings.
Below are some important guidelines for the proper use of the symbols ®, TM, MD and MC.
- The symbol should be clearly visible. In one case, a Trademarks Senior Hearing Officer expunged a trademark registration for non-use, noting that she might have found otherwise if the TM symbol had been larger.
- The symbol should refer to the correct trademark. In another case, a company applied to register the trademark ALOEVITE, but their only evidence of use included the symbol TM after the words MEDIQUE ALOEVITE FACE CREAM. The Trademarks Opposition Board refused the registration, finding use only of the four-word trademark and not of the trademark ALOEVITE on its own.
- Use the correct symbol. In Canada, there is no clear legal distinction between the symbols ®, TM, MD and MC. However, other jurisdictions — such as the United States — can impose penalties for incorrect use of the symbol ®. In Canada, when in doubt, use one or both of TM or MC to avoid the potential consequences of improperly claiming rights to a trademark registration.
- Show the correct registered user with the symbol. Sometimes, the name of a company appears near one of the symbols ®, TM, MD or MC. In one case, the company name that appeared next to the symbol ® was not the owner of the registration or a registered licensee of the owner. In an expungement proceeding, the owner could not prove that it had used the trademark in the relevant period of time, and the owner therefore lost some of its trademark registration rights due to non-use.
It is important to note that the symbols ®, TM, MD and MC cannot overcome certain deficiencies in a trademark. In one case, a trademark that was clearly descriptive could not be registered, even though trademark symbols were used. Also, where the overall impression of the Trademarks Opposition Board was that a mark was not used as a trademark, merely using the symbol TM was not enough to register the mark. Nevertheless, appropriately using trademark symbols can bring significant benefits to trademark owners.
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