Should a business display its trademark with the R in a circle symbol ® or the TM symbol TM? What do these symbols mean? Is it necessary to mark a trademark in Canada with ® or TM? These are common questions asked of trademark lawyers. Here is brief guide regarding trademark marking in Canada.
What Do The ® and TM Symbols Mean?
The ® and TM symbols, and their respective French equivalents MD (marque déposée) and MC (marque de commerce) are commonly used in Canada and foreign jurisdictions. These symbols are intended to signify that some kind of trademark protection has been afforded to the trademark designated with these symbols.
The ® symbol (or MD) indicates an ownership claim to a registered trademark that is registered with a national or regional trademark office/authority.
If a trademark owner claims trademark rights in an unregistered trademark, then the TM symbol (or MC) may be used. By using the TM symbol, the trademark owner is putting the public on notice of the owner's ownership claim to the unregistered trademark.
It is important to know that merely marking a trademark with the TM symbol does not automatically create a trademark nor confer any trademark rights. Whether a sign (i.e. a word, phrase, slogan, logo, or other source identifier) is in fact a trademark, depends on whether that sign meets the criteria for trademarks as set out in the Trademarks Act and under Canadian law. Generally, a trademark cannot be clearly descriptive in nature of the associated goods or services, and a trademark cannot be the same or confusingly similar to another party's trademark. If it is, then merely placing a TM symbol after a sign does not in and of itself, make that sign a trademark.
In contrast to the well-recognized ® and TM symbols, other trademark symbols are not used globally. For example, in the United States the symbol SM may be used for unregistered trademarks associated with a service. However, the TM symbol is broader in scope and may cover both unregistered product trademarks and service trademarks.
No Marking Requirement in Canada
In Canada, there is no legal requirement to mark your trademark with any kind of symbol. Accordingly, it is not necessary to use any symbol with your trademark in Canada.
In contrast, other jurisdictions such as the United States do have marking requirements. In the United States, the ® symbol means that a trademark is registered with the US Patent and Trademark Office. There are penalties in the United States for improper use of trademark symbols – for example, using the ® symbol with a trademark that is not registered in the United States.
As a result, Canadian businesses that use the same trademark with their goods sold in both Canada and the USA, but the trademark is registered in Canada and unregistered in the USA, may choose to still use the TM symbol with the trademark in both countries. By doing so, the trademark is marked consistently on both sides of the border and avoids possible penalties in the United States for misuse of the ® symbol in that country.
Proper Use
If a trademark symbol is going to be used, it is important to place the trademark symbol correctly. The trademark symbol should be immediately after the trademark. For instance, when a trademark is followed by a descriptive word or words that do not form part of the trademark (e.g. Volvo Electric Cars, TaylorMade golf clubs), the trademark symbol should be placed immediately after the trademark and before the descriptive word(s), to identify the trademark being used.
Generally, it is not necessary to use a trademark symbol with every display of the trademark. A trademark symbol can be used at least once within a promotional piece (brochure, website, packaging, etc.), either with the first display of the trademark, or with the most prominent use of the trademark.
Whether or not trademark symbols are used, it is a good practice to always display the trademark in a distinctive way to clearly identify the trademark. Trademarks should be displayed in a different font or other different manner (e.g. coloured, all capital letters, italicized and/or different font size) to distinguish the trademark from the surrounding text.
Advantages
There are advantages to proper use of the ® and TM symbols.
A trademark owner is giving notice to the public that trademark rights are being asserted in the trademark at issue. Such notice may cause some consumers to better recognize a business' trademark and enhance the goodwill in that trademark, which is particularly helpful for enforcing unregistered trademarks.
At the same time, trademark symbols may deter competitors from adopting the same or similar mark. Notice is given that a trademark is registered or rights in an unregistered trademark are being claimed. Such notice signals that the trademark owner is invested in its trademark and is likely prepared to enforce it.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
