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Trademark Symbols as a Mark of Ownership

As a consumer in Canada, it is likely that you have seen the "™" and "®" on commercial products and services. These symbols are meant to signify that the brand name or slogan in question is subject to trademark protection, and that competitors who try to take advantage of the publicity or goodwill accumulated by the brand by riding the brand's coattails can face legal penalties.

If you own a trademark, you may be able to take advantage of the additional protection these symbols confer. While using these symbols next to registered or unregistered trademarks is not mandatory in Canada, unlike in many other jurisdictions, there are many scenarios in which using them to identify your rights could be to your advantage.

Which symbols can be used to signify trademark ownership?

While no official rules exist on the use of symbols in Canada, the "®" (registered trademark) mark or its French equivalent, "MD" (marque déposée) should be used when the trademark in question has been officially allowed for registration by the Canadian Intellectual Property Office (CIPO). For unregistered trademarks, the "™" (trademark) symbol in English or the "MC" (marque de commerce) symbol in French is used to signify ownership.

Some trademark owners who have obtained a registration in Canada but not in other jurisdictions where they have commercial operations (e.g., the United States) may prefer to use "™" on all of their products to avoid confusion.

If your product is sold nationally, you may want to consider trademark protection in both English and French.

Where applicable, it can be useful to clarify whether a licensing arrangement has been made for the trademark in question. This can be done by stating, somewhere on the product or product packaging, that the trademark is owned by "Company/individual X" used under licence by "Company Y".

There is no official penalty for misusing trademark symbols in Canada. However, using "™" and "®" symbols where no trademark ownership exists can trigger lawsuits if the mark in question is owned by someone else, and/or create issues once the product is commercialized in other jurisdictions.

When adding the symbol to the brand name or slogan in question, it is crucial to ensure that it is used around the right words. For example, if the trademark is accompanied by a description of the product (i.e., McDonald's Hamburgers, Pantene Shampoo), the symbol should be used directly after the trademark and before any descriptions. Otherwise, the entirety of the sentence will be viewed as a trademark and the specific word/phrase used by your business will not acquire any benefits of marking.

Advantages to marking a trademark

Using a symbol to indicate trademark ownership has several advantages.

First, consumers who see a trademark indication on product packaging or beside a slogan may confer increased legitimacy onto the brand. Accordingly, the brand is more likely to acquire a stronger reputation and goodwill. Building this reputation can also aid with the proof of use requirement that is currently necessary for trademark registration in Canada, and in cases of litigation for unregistered trademarks.

Second, marking your trademark can also deter competitors from attempting to profit off the goodwill built by your product and brand. Using a clear visual symbol removes the potential excuse that the competitor was not aware that trademark ownership existed as adequate notice of such ownership will have been provided.

Third, and finally and simply put, taking such measures informs others that you are serious about and invested in the protection of your trademark and thus, your business assets.

A word of caution

It should be noted that using a trademark symbol does not automatically qualify a word or phrase as a trademark and confer the associated advantages onto it. Make sure that your trademark, if unregistered, meets the requirements for trademarking in Canada, including not being descriptive in nature, not being identical or confusingly similar to other trademarks, and not a word in another language. Please refer to the CIPO trademarks guide for a complete listing of restrictions on trademark use and registration.

Conclusion

Although the use of symbols alongside registered and unregistered trademarks in Canada is not mandatory, employing the use of such a symbol can protect you from infringement by competitors and help you accumulate consumer goodwill. If you ever choose to expand your business internationally, implementing symbols now may ease the transition, as several other jurisdictions including the United States, the United Kingdom and France have more stringent regulations on marking trademarks.

Again, while no official laws exist on symbol use in Canada, ensure that you cover all the bases by checking that the mark you are trying to protect qualifies as a trademark, is available for use and that the symbol applies to the relevant part of your brand or slogan rather than to descriptive matter.