Use of Trademark Notices in Canada
Canada does not have any specific legislation regarding the use of trademark notices such as ® or TM. However, for a number of reasons, the use of such notices is recommended, especially if the mark in question is used in Canada by licensees of the trademark owner.
A fundamental principle of Canadian trademark law is that a mark must distinguish the source of the goods, although the public need not be able to specifically name the source for the mark to be valid. However, if a mark is used in such a way that the public is left in doubt as to the owner of the mark, then a mark may be found to be non-distinctive, and thus invalid.
Where marks are used by licensees or distributors, whose names appear on packaging, often to comply with Federal packaging or labeling laws, unless a trademark notice is used there can be confusion about the owner of the marks or the relationship between the owner and the licensee. Canadian trademark law has focused for many decades on the importance of ensuring that use by licensees does not adversely affect trademark validity, and current Canadian law states that where the owner of a mark controls the character and quality of the goods or services associated with the mark, then the use by the licensee is deemed to be use by the mark's owner. However, the Trade-marks Act provides that where public notice is given of the identity of the trademark owner, and the fact that the use is licensed, then the use is deemed to be under the control of the trademark owner (s.50(2)). To be able to take advantage of this deeming provision, some form of trademark notice is required.
Another reason to use a trademark notice is to advise the public and potential competitors of a trademark claim to particular words or designs. Especially where a mark is suggestive, and there is concern that others may consider the mark to be descriptive, the use of a trademark notice may help to persuade others (and especially a court if this matter is ever litigated) that the disputed words are in fact a trademark.
There is no specific format for trademark notices. The nature of the use, the size of the packaging, and aesthetic concerns often have an impact on the specific form of notice that is given. There is similarly no need to use a notice after all references to a trademark. Instead, a symbol, such as ®, TM, or *, with a suitable notice identifying the owner name and, if necessary, the licensee information, should appear at least once on labels, on packaging, or in advertising. Also, there is no need to use a notice that indicates that a mark is registered, although the use of the ® symbol is widely used, and would be recognized by many as indicating a registered trademark, its use should be restricted to marks that are actually registered. Similarly, there is no specific form of notice to indicate that a mark is used by a licensee. Language such as "used under license", "used with permission", ''licensed use", or "licensed user" are all common and acceptable.
Some examples of notices, depending on space limitations, that incorporate both English and French notices, include the following:
1. For a mark used only by the trademark owner
After a prominent display of the mark on packaging, or in advertising, one of ®, TM/MC, or * accompanied at least once on the packaging or in the advertisement by one of the following options:
- Registered trademark of Acme Inc./Marque déposée d'Acme Inc. (for registered marks only), or
- Trademark of Acme Inc./Marque de commerce de Acme Inc. (for registered and unregistered marks),
or the notice can be abbreviated to:
- Reg. TM/MD – Acme Inc. (for registered marks only), or
- TM/MC – Acme Inc. (for registered or unregistered marks).
2. For marks used by a licensee
After the mark, one of the following: ®, TM or * followed by one of:
- Registered trademark of Acme Inc., used under license (or with permission) by Acme Canada Inc./Marque déposée, utilisée sous license par Acme Canada Inc. (for registered marks only), or
- Trademark of Acme Inc., used under license (or with permission) by Acme Canada Inc./Marque de commerce de Acme Inc., utilisée sous license par Acme Canada Inc. (for registered and unregistered marks), or
- Reg. TM/MD – Acme Inc. - lic. User/usager lic. Acme Canada Inc. (for registered marks only), or
- TM/MC Acme Inc., lic. user/usager lic. Acme Canada Inc. (for registered and unregistered marks).
Similar language can be used if the product will name a distributor, which is common for imported goods, or for other regulatory reasons, a local name must appear, in which case, instead of referring to a "licensed use", the notice may refer to "distributed by/distribuée par….”
There may be specific marketing reasons to refrain from using the name of the trademark owner on packaging, and Canadian laws do not require that name to appear. However, if the trademark owner's name does not appear, it becomes more important to ensure that the owner is in a position to demonstrate that the licensee's use is under the control of the trademark owner, since it will not be able to rely upon the deeming provision discussed above. Also, any notice identifying the licensee should not mislead consumers to believe that trademarks on the packaging or advertising belong to the trademark owner.
We would be happy to answer any questions you may have on the use of trademark notices in Canada, or any related licensing questions.