Published September 1st, 2016

Unlike the United States, Canada does not have any statutory requirement to expressly identify trade-marks.  Furthermore, the Federal Court of Canada has recognized that there is no requirement to provide notice when using unregistered or registered trade-marks in Canada with the symbols ™, MC or ®.

The U.S. Lanham Act states:

“a registrant of a mark registered in the Patent and Trademark Office, may give notice that his mark is registered by displaying with the mark the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.”

Thus there is a real incentive in the United States for trademark owners to provide notice of their trademarks.

However, as case law has demonstrated, the lack of similar statutory notice provisions in Canada does not mean that there are not good reasons to adopt symbols such as ™ and/or the French equivalent MC to alert the public that a trademark is proprietary and not, for example, an ordinary description.

The more the public associates a trademark with its owner, the more likely that its distinctiveness in the mark will grow. Marking helps to achieve this.

Trademark owners need to be careful how they use a trademark symbol.  Case law is clear that improper use of the trademark symbol can attract adverse consequences.  For example, knowingly adopting a competitor’s mark and using the ™ symbol in association with the new owner’s product was characterized by the Ontario Supreme Court as “being the zenith” of “corporate arrogance” (Pro-C Ltd. v. Computer City, Inc., 1999 CanLII 14926 (ON SC) at para. 165)

New legislation is expected to come into force in Canada in 2018.  For now it does not appear that any notice provisions governing trademarks will be included in the legislation or regulations; however, until the “deal is done”, anything could be possible.

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