Using a trademark notice is permissive but prudent. A brand owner should use the notification™ or the French equivalent MC to identify unregistered trademarks and the symbol® or the French equivalent MD to identify its registered trademarks. It is prudent to place the relevant symbol in superscript on the “right shoulder” of the mark, so it is linked to the trademark being used.
In addition, the brand owner may use a trademark legend with the above symbols. For example, “® a registered trademark of XYZ Company”. Using such a legend when a trademark has been licensed combined with a statement that the use is licensed gives rise to a statutory presumption that the use is licensed and under the control of the brand owner.
If the trademark in issue is non-traditional it is useful to give notice of the nature of the mark. For example, “The colour and word mark TIFFANY Blue is a trademark mark of Tiffany and Company”.
If multiple references are made to a trademark on a product or in an advertisement the general practice is to use the notice with the first and most prominent use of the mark but to not repeat the use of the notice every time the mark is reproduced.
If the trademark is used in another language or country, the appropriate symbol for that language or country should also be used. However, if the trademark has not been registered in that country, the symbol® should not be used in that country.
Using such notices has several advantages. First, third parties will be put on notice of the brand owner’s rights. Second, in some cases the use of the notice may assist the brand owner in establishing that the brand name has been used as a trademark. Third, as set out above, using the appropriate legend when a trademark has been licensed gives rise to a statutory presumption. Finally, some suggest that the use of such notice provides an additional element of confidence for consumers, as they may infer that the names and symbols thus endorsed carry the weight of statutory approval.
Comment
It is important to use appropriate trademark notices.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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