Trademark Symbols Explained

As a consumer in Canada, you have inevitably observed the TM symbol "™" and R symbol "®" displayed on commercial products and in connection with services. You might have wondered: what does TM mean? And what does the symbol R in a circle mean? Are they different?

The trademark symbol ™ and the registered trademark symbol (®) are meant to signify that the brand name, slogan, logo, or other brand identifier 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. Unlike in many other jurisdictions such as the United States where failure to use a registration notice may limit the remedies available to a trademark owner, using these symbols next to registered or unregistered trademarks is not mandatory in Canada. However, there are many scenarios in which using them to underscore 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 the registered symbol 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 may be properly 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 the ™ symbol on all of their products irrespective of their destination to avoid confusion. Using the ™ symbol in these cases is much less onerous than producing two versions of a product or promotional material (one with the ™ symbol, one with the ® symbol).

If your product is sold nationally, you may want to consider trademark protection in both English and French. If your product or service is made available outside of Canada, you may want to investigate whether such jurisdictions use specific symbols for trademark marking that may not be used globally. For example, in the United States, the “SM” service mark symbol is used to identify ownership of unregistered trademark rights in association with a service.

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, or promotional material as the case may be, that the trademark is owned by "Company/individual X" and is 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, 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 or phrase used by your business will not acquire any benefits of marking.

It is not necessary that every single instance of a trademark in an advertisement be accompanied by the trademark symbol. The trademark symbol can be placed next to the most prominent use of the trademark or the first use of the trademark if the instances of use are equally prominent.

A trademark logo or design mark may also be marked with the trademark symbol or registered trademark symbol. This is typically indicated near the top right of your logo much like how the symbols are used for word marks. Since businesses may use many forms of marketing and advertising materials in marketing their products and services, it is prudent to ensure any materials that use a trademark are accompanied by the appropriate trademark symbol. Furthermore, consider including a notice stating that such words, logos, or designs are trademarks owned by you.

You may also wish to use a trademark symbol or registered trademark symbol to denote trademarks in email correspondence. This is easily done. To insert the trademark symbol, press Ctrl+Alt+T. To insert the registered trademark symbol, press Ctrl+Alt+R. You can also use the default AutoCorrect feature by typing T, or R enclosed in parentheses such as (tm) or (r). The text will automatically change to the respective symbol.

Advantages to marking a trademark ™ or ®

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 consider the brand as having greater legitimacy. Accordingly, the brand is more likely to acquire a stronger reputation and goodwill. Building this reputation can also aid in litigation involving unregistered trademarks since the scope of protection for unregistered marks is based on their reputation in the relevant market.

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 of your trademark ownership as adequate notice of such ownership was provided.

Third, 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. This can have the effect of deterring those contemplating the misuse of your trademark who may have otherwise gone ahead hoping the trademark owner would not take legal action.

Identifying your trademarks

As a preliminary step, it is important to identify the marks used by the business that qualify as trademarks and ought to be accompanied by trademark symbols to communicate your interest in the marks to the public.

Trademarks fulfill the role of distinguishing the products and services of your business from those of competitors in any location where prospective consumers might come into contact with your products and services or those of your competitors. Trademarks include one or any combination of words, sounds, logos, designs, tastes, colours, textures, scents, moving images, three-dimensional shapes, modes of packaging, or holograms that serve as an identifier of source for a product or service.

Also understand that trademark rights are legally distinct from a corporate name, business name, or domain name, which serve the purpose of identifying a corporation, business, or web domain itself, even though these names can additionally qualify as a trademark under certain conditions.

For some types of trademarks, like colours, sounds, textures, and scents, it may be unclear how a trademark symbol should accompany a product or service to properly give notice of your legal rights.

In these circumstances, consider including a notice in a proximate location that would be visible or otherwise accessible to anyone who might come across your product or service and which conveys your trademark interest in the mark. For example, if you wish to assert that you are using a specific shade of blue in a product as a trademark, you might include a notice on the product itself or the product’s packaging that states that the particular colour blue used in the product is a trademark of the particular trademark owner, and if applicable, used under licence.

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 upon 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 being a word in another language. Please refer to the CIPO trademarks guide for a complete listing of restrictions on trademark use and registration or contact us for a complimentary and confidential initial telephone appointment.

Use of a given word or logo must also be such as to constitute use as a trademark when the owner intends to rely on unregistered trademark rights. Marking a word with the ™ symbol will not transform the use to which the word is put. For example, in a case before the Trademarks Opposition Board, the opponent of an application for the mark PHYSICIAN’S CHOICE succeeded on the ground that the applicant had not used the applied-for term as a trademark – this, despite it having appeared on product packaging followed by the ™ symbol. The court considered that the term, which, on the product, immediately preceded a mailing address for the applicant, was not used as a trademark but rather formed part of that address. The marking of the term with the ™ symbol was insufficient evidence to the contrary.

Take time to review your promotional materials and determine how best to put the public on notice of your trademark rights. Also consider registering your trademarks with the Canadian Intellectual Property Office or the intellectual property offices of other jurisdictions in which you regularly do business using those trademarks. Enforcement of a registered trademark is a great deal easier than enforcement of an unregistered trademark, assuming that the jurisdiction concerned even recognizes unregistered trademarks.

Lastly, be aware that trademark disputes can significantly impact your business’s ability to effectively market its products and services, particularly if you are the one who has to rebrand. As such, it is prudent to obtain trademark registrations (which in Canada gives you the exclusive right to the use of the trademark in association with the listed goods and services), as well as maintain records of how you have used your trademarks, to maximize your chance of success in the event of a trademark dispute.

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 valuable for building the value of your business. 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.

Further, ensure that you cover all of your bases by checking that the mark you are trying to protect qualifies as a trademark, is available for adoption and use by you and that the symbol is applied to the relevant part of your brand or slogan rather than to descriptive matter.

Need more help with your trademarks? Contact us for a complimentary and confidential initial telephone appointment.