Trade-marks in Canada: Should I use ™ or ®?

A trade-mark is a brand. Fundamentally, it operates in a referential manner, signifying and directing consumers to a particular person or business.

Trade-marks distinguish 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. Trade-marks can 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.

Registration of a trade-mark with the Canadian Intellectual Property Office (“CIPO”) provides the best protection of your mark or brand. Registration provides a statutory protection preventing anyone else from using your mark, or anything confusingly similar, for 15 years. However, you do not have to register it to have a trade-mark. You acquire common law trade-mark rights by use. The more publicity and goodwill associated with your mark, the stronger your rights.

Using symbols like ® and ™ next to your trade-marks is not mandatory. However, their proper use is best practice, particularly if you want to strengthen your brand.

The “®” (registered trademark) mark or its French equivalent, “MD” (marque déposée) can only be used once the trade-mark has been officially registered with CIPO. For unregistered trademarks, the “™” (trademark) symbol or “MC” (marque de commerce) can be used to signify trade-mark ownership.

Falsely claiming trade-mark registration by adding “®” when no registered trademark exists violates the Trademarks Act (R.S.C., 1985, c. T-13) and could make you liable, on summary conviction, to a fine of $25,000 or imprisonment for a term of not more than six months, or both. In addition, you could find yourself embroiled in a lawsuit, if the mark in question is owned by someone else.

When adding a trade-mark symbol to a word, logo, design, or slogan in question, place the symbol immediately after the mark in question. Otherwise, the entirety of the phrase could be viewed as the trade-mark, and, instead of strengthening, you could undermine your actual mark and brand.

For some types of trade-marks (e.g. colours, sounds, textures, and scents), it is difficult to affix a trade-mark to properly give notice of your legal rights. In these circumstances, use a notice in a proximate location visible or otherwise accessible to anyone who might come across your product or service and which expressly notes your trade-mark interest. For example, if you or your brand uses a specific shade of red as a trade-mark, include a notice on the product itself or the product’s packaging that states the colour is a trade-mark and belongs to you (or used under license, as the case may be).

Using a symbol to indicate your trade-mark ownership is proper and prudent. A trade-mark indication on packaging, or beside a name or logo, may confer increased legitimacy on your brand. Your brand will therefore be more likely to acquire a stronger reputation and goodwill. Building your reputation can also help in litigation, if you need to issue a cease and desist letter or sue for infringement, as the scope of protection for unregistered trade-marks is based on reputation in the relevant market. Marking your trade-mark can also deter competitors from copying your mark, as it “stakes your territory”, provides notice of such ownership, and removes the potential excuse that a competitor was not aware that trade-mark ownership existed. In addition, signalling trade-mark ownership informs others that you are serious about and invested in the protection of your mark and thus, your business.

Finally, it must be noted that simply adding a trade-mark symbol to your brand does not automatically make it a trade-mark or give you trade-mark rights. You must make sure that your mark meets the requirements for trade-marking in Canada, including not being merely descriptive, or generic, or identical or confusingly similar to another trade-mark, or merely a word in another language.