In Canada, a trade mark may be either registered or unregistered. An unregistered trade mark, often referred to as a common law trade mark, is one being used by a party to distinguish its wares and/or services from those of another in a certain geographic area that has not acquired the protection of registration under the Canadian Trade-marks Act.
Although there is no legal requirement regarding the use of trade mark notices such as ™ and ® in Canada, it is generally recommended that registered trade marks be identified with the ® symbol and unregistered trade marks be identified with the symbol ™ or, alternatively, with the bilingual forms TM/MD (trade mark/marque deposée) for a registered mark and TM/MC (trade mark/marque de commerce) for a common law mark.
Using a trade mark notice such as ™ and ® is a beneficial way of informing consumers and other competitors of one's ownership in a mark. Even though using the ® symbol in Canada in association with an unregistered trade mark is not prohibited by statute, such use could invite challenges outside of the Trade-marks Act.
While it is not absolutely necessary to use trade mark notices to identify registered and unregistered trade marks in Canada, if a mark is being used under licence such use should ideally be identified on all relevant packaging, advertising, etc relating to the trade marked goods/services by means of a notice. In order to meet the provisions of Section 50(2) of the Trade-marks Act which relate to licensing, it is required that public notice of the owner's identity be given in order to obtain the rebuttable presumption that the use is licensed and the character and quality of the wares or services is under the control of the owner.
Providing notice of a licensed use is typically accomplished by using an asterisk (*) or the ® symbol which corresponds to a statement on the packaging, advertising, etc advising that the use is licensed and indicating who actually owns the mark.
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Elizabeth Sterling |
Marks & Clerk Canada
PO Box 957, Station B
Ottawa ON K1P 1C2
Canada
Tel: +1 613 236 9561
Fax: +1 613 230 8821
