For more insight on this topic, watch our recent webinar "Distinctly Canadian: Unique aspects of Trademark prosecution in Canada".
Trademark symbols, including ® and TM, and their French counterparts MD and MC, are commonly seen in the Canadian and international marketplaces. While such symbols are easy to recognize, it is important to understand the differences between them,
their significance, and how to properly use them.
Used properly, the symbols ® and MD ("marque déposée") indicate a claim to a registered trademark, whereas the symbols TM ("trademark") and MC ("marque de commerce") indicate a claim to any kind of trademark (registered or unregistered).
Benefits of using a trademark symbol to protect your mark
Because trademark symbols are recognized as indicating a claim to trademark rights, using these symbols may help promote public recognition of a trademark. Such recognition is particularly important to obtaining and enforcing unregistered common
law trademark rights, and may deter competitors from adopting the same or similar trademarks.
Using such symbols can also assist with obtaining, maintaining, and enforcing registered trademark rights. For example, in a trademark opposition or expungement proceeding, or in trademark enforcement litigation, a trademark owner may have to prove use or distinctiveness of a trademark. Evidence that a trademark has been used with an appropriate symbol has, in some cases, helped to obtain, maintain or enforce registered rights in the trademark.
Using an appropriate symbol is particularly important in situations where the public might not perceive that a particular mark is a trademark. For example, where a trademark is surrounded by words or other indicia that do not form part of the trademark, an appropriate symbol may clarify the trademark that is used. Further, where a trademark is also all or part of a company's name, consumers might see that only as use of the company's name, unless an appropriate symbol clarifies that the trademark is being used as such. The use of appropriate symbols has, in some cases, helped carry the day for the trademark owner in oppositions and expungement proceedings.
However, despite the above-noted benefits of using trademark symbols, they cannot overcome inherent deficiencies in a trademark. For instance, if a trademark is clearly descriptive of the associated goods or services, the use of a trademark symbol will not, in and of itself, render the mark registrable in Canada.
Caveats and penalties for incorrect use of trademark symbols
There is neither an official guideline nor statutory provision in Canada regarding the correct trademark symbol to use. However, other jurisdictions such as the United States can impose penalties for incorrectly using the symbol ® (for example, if the mark is not currently registered, if the mark is only registered in another country, or if the mark is registered with different goods and services). Therefore, to reduce the risk of consequences outside of Canada, many Canadian trademark owners use the symbols TM or MC, even for trademarks that are registered.
For marks used in the province of Quebec, the Office Québécois de la langue française accepts the use of either the French or English version of the symbols. As such, it may be simpler for trademark owners in Quebec to
simply use the English version of the symbols (® or TM). For more insights on the laws in Quebec governing language used in commerce, including for trademarks and brands, please refer to our article series on the French Language.
It is also important to use the appropriate symbol with the actual trademark of interest. For example, in one trademark opposition proceeding, 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 ALOEVITE on its own.
Although using the trademark symbols ®, TM, MD, and MC is not mandatory for Canadian trademark owners, appropriately using them can provide trademark owners with significant benefits, including warding off infringement by competitors and aiding your business’s ability to excel in the marketplace.
If you have any questions on trademark symbols, or for more information on this topic, please contact a member of our Trademarks & Brand Protection team.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.