“Marking” Your Trade-mark Properly

By Vanessa DeDominicis

A question I often get asked is “Should I be using the ™ symbol or the ® symbol beside my trade-mark?” Believe it or not, there are no “marking” requirements for trade-marks under the Canadian Trade-marks Act, however, proper marking is an extremely important method of notifying consumers that a certain word or symbol is a protected trade-mark and goes a long way to preventing third party infringement as you are effectively putting third parties ‘on notice’ that the trade-mark belongs to you. Many trade-mark owners use symbols purely as a deterrent.

The ™ symbol may be used on registered and unregistered trade-marks. So, by using the™ symbol, all the owner is doing is indicating to third parties that they are using the words or design in question a trade-mark – it does not tell anyone whether that mark is registered or unregistered. A ™ designation just means that the user of the trade-mark asserts that the word, phrase, design, or whatever it is, is a trade-mark owned by the user. Anyone can assert that anything is their trade-mark, but that does not necessarily mean that the user has exclusive rights to that mark.

The Registration symbol, ®, is a powerful symbol, but should be used with caution, and only when registration has been obtained in both Canada and the US. If you can be sure that the only use of your trade-mark is entirely within Canada, then use of the ® symbol is fine. However, the US has very strict marking rules, so if some of your use spills over into the US market (which can be very hard to predict), then it is safer to use the ™ symbol until you have a US registration as well as a Canadian one, and once you have a US registration, using the ® symbol is mandatory in the US market.

That all being said, I often find my clients prefer to use the ™ designation, even when they have a registered trade-mark, because they feel that the consumer understands it better than the ® symbol. This is fine. The important thing is that the trade-mark is marked with one or the other. Some clients have used the ™ beside their mark throughout the registration process and don’t want to switch to the ® symbol once the trade-mark issues to registration because of the cost of re-printing all their marketing materials/product, which is absolutely fine. It does not matter which symbol you use, as long as you do not misuse them (for example, by using the ® symbol for an unregistered trade-mark).

This is provided as information ONLY; it should NOT be construed as legal advice. You should consult with a lawyer to provide you with specific advice for your own situation. For more information on intellectual property and to discuss your specific circumstances, please contact Vanessa DeDominicis on 250-869-1140 or dedominicis@pushormitchell.com. Vanessa is registered Canadian and US Trade-mark Agent and practices in the area of Intellectual Property at Pushor Mitchell LLP in Kelowna and would be more than happy to assist you.