In Canada, trademark owners may wish to use trademark symbols — i.e., ®, TM, MC and MD — to signify a claimed trademark and ward off competitors. Not all symbols are created equal, however, and it is important to understand the differences between them, their significance, and proper use.
Different symbols have different meanings
A superscripted “TM”, or its French equivalent “MC” (“marque de commerce”), can be used to indicate a claim to either a registered or unregistered trademark. By contrast, the symbols ®, and its French equivalent MD (“marque déposée”), are limited to registered trademarks. For marks used in the province of Québec, the Office Québécois de la langue française accepts the use of either the French or English version of the symbols.
For more insights on the Québec language laws and trademarks, please refer to our article “Quebec’s French language requirements for commerce and business: reform of the Charter of the French language”.
Benefits of using trademark symbols
The use of trademark symbols offers trademark owners several potential benefits.
Acquire goodwill and reputation among consumers. Consumers who see trademark symbols may come to identify the marked off matter as a trademark, and rely on that trademark as a mental “shortcut” for assessing whether the associated good, service, or business is the desired one (i.e., as a “source identifier”). Such “goodwill” is essential to establishing and enforcing trademark rights at common law – the only type of protection available for unregistered marks in Canada.
Identify what matter is the “trademark”. When seeking registration, showing that matter is claimed as a trademark can help establish that an otherwise not inherently distinctive or clearly descriptive mark, or one that is primarily merely a name or surname, has acquired distinctiveness through use, and is therefore registerable. Likewise, where the trademark is surrounded by other words or indicia, including within a company name, using a symbol can help consumers distinguish between what is claimed as a mark from what is not claimed. For example, in one case, the presence of the ® symbol in the middle of a corporate name, “Intercity® Insurance Services Inc” was found to support use of “INTERCITY” as a trademark. By contrast, in another case, the placement of the “TM” symbol after the words “MEDIQUE ALOEVITE FACE CREAM”, but not after “ALOVITE,” led to a conclusion that this word alone was not the trademark being used.
Maintain and enforce registered rights. When asserting or defending a registered mark, a trademark owner may need to prove use or distinctiveness of a trademark. Evidence that a trademark has been used with an appropriate trademark symbol has, in some cases, helped establish the enforceability of those registered rights.
Limitations
A trademark symbol, however, is not a salve. The use of a symbol, in and of itself, does not automatically confer rights on the user, nor does it overcome inherent deficiencies in a trademark. For instance, if a trademark is the name of the associated goods or services in any language, the use of a trademark symbol will not render the mark registrable in Canada.
Incorrect use
The ® symbol communicates that a mark is registered. This symbol may be considered as used incorrectly 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.
In Canada, there is no statutory provision that imposes penalties for incorrect use of this trademark symbol. However, in at least one case, use of the symbol ® where the mark was not registered in Canada was found to constitute a false or misleading statement that tended to discredit the goods of a competitor who held common law rights in the mark, regardless of the fact that it was registered elsewhere (although no damages were found).
Jurisdictions outside of Canada may impose penalties for incorrect use of the ® symbol. For example, in the United States, misuse could result in cancellation of a pending trademark application and deliberate misuse is considered fraud.
To reduce the risk outside of Canada, many Canadian trademark owners may wish to use the more general symbols “TM” or “MC”, even once their mark is registered.
Considerations for licensed trademarks
In Canada, for the benefit of a licensee’s use to ensure to the trademark owner, the owner must directly or indirectly control the character or quality of goods or services associated with the trademark. A presumption of control can be created through public notice of the owner’s identity and the relationship between the trademark owner and licensee.
For example:
All marks
- TM/MC Acme Inc used under license by / utilisée sous license par Acme Canada Inc
- [Trademark] MC Marque de commerce, utilisée sous license par Acme Canada Inc
Registered marks
- ®/MD Acme Inc used under license by / utilisée sous license par Acme Canada Inc [Trademark] Registered trademark of Acme Inc, used under license (or with permission) by Acme Canada Inc
- [Trademark] MD Marque déposée de Acme Inc, utilisée sous license par Acme Canada Inc
Concluding remarks
Although using the trademark symbols ®, TM (and French equivalents, MD and MC) is not mandatory in Canada, appropriate use can provide benefits, including warding off competitors and helping distinguish products and services in the marketplace.
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.