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Protecting Your Trademarks outside Canada

Introduction

As discussed in our earlier article “11 Benefits of Registering Your Trademark in Canada”, there are several benefits to registering your trademark in Canada. Registering your trademark in Canada ensures that the reputation of your brand is protected by giving you the rights to the exclusive use of a name, logo or other brand element in association with goods and services as set out in your trademark registration for a renewable 10-year period. This serves to prevent competitors from capitalizing on the reputation your brand has built by using your brand elements to attract customers.

With the globalization of business and the reach of the Internet, your brand may extend (or may soon extend) outside of Canada. As registering your trademark in Canada gives you exclusive rights only in Canada, to obtain protection for your mark outside of Canada it is necessary to register your trademark in those jurisdictions, as further explained below.

Does your Canadian trademark registration entitle you to protection in other countries?

As of today, the short answer is no. Although certain common law rights may serve to protect the reputation you have established through the use of your trademark if that use meets a certain threshold, those rights are neither as effective nor as valuable as a trademark registration when it comes to protecting your brand.

Although protection in foreign jurisdictions is not automatic, Canadian trademark applicants seeking the protection of their trademark abroad can benefit from the Paris Convention for the Protection of Industrial Property. Pursuant to the Paris Convention, if a foreign trademark application is filed within six months of the filing date of a Canadian trademark application, a priority claim to the Canadian trademark application may be made such that the foreign application supersedes trademark applications filed in that jurisdiction at any time following the Canadian filing date. For example, if you filed an application for your trademark in Canada on July 1, 2018, you would have until January 1, 2019 to file in the United States and have your filing date in the U.S. be treated as if it were effectively July 1, 2018.

For this reason, it is advisable to file trademark applications in other countries or regions in which you would like to secure protection for your trademark within six months of filing your Canadian trademark application. This may allow your foreign application to take precedence over similar applications filed in the period between your domestic and foreign filing dates.

How to protect your trademark in other jurisdictions

Trademark registration in the United States

The United States, due to its close proximity to Canada and abundance of consumers, is a natural expansion prospect for Canadian business owners. As discussed above, it is best to file a trademark application in the United States within six months of filing a trademark application in Canada in order to take advantage of the convention priority period.

Registering your trademark in the United States confers advantages over common law rights similar to those available in Canada, such as securing the exclusive right to the use of your trademark nationwide and creating a legal presumption of ownership in court actions.

In order to register a trademark in the United States, you must file an application with the United States Patent and Trademark Office (USPTO). It is also advisable to conduct a trademark search prior to applying for and adopting your mark to ensure that there are no confusingly similar trademarks that have been registered or applied for or are in use in commerce in the United States.

See our resource to learn more about the importance of trademark searches.

A recent rule change by the United States Patent and Trademark Office prevents us from continuing to represent Canadian applicants for US trademarks, however, we continue to apply our years of experience to the preparation of applications for Canadian applicants and arrange for their filing by U.S. trademark agents.

Trademark registration in Europe

The European Union Intellectual Property Office (EUIPO) allows you to file a single application in order to obtain a registered trademark in the 27 countries of the European Union.

Notably, the European Union operates on a “first to file” system, rather than the “first to use” system currently in place in Canada. For this reason, there are no common law principles protecting an unregistered trademark based on use. Trademark registration is the only way to effectively protect your trademark in the European Union. Unlike in Canada, you will not be able to rely on commercial use to establish your ownership of a mark if a legal dispute arises.

Note that, following Brexit, an application for trademark protection in the United Kingdom must be made to the UK Intellectual Property Office directly. Of course, an exception was made for EU marks registered before 2021, which, had it not been for Brexit, would have already been protected in the UK. These registrations were cloned, meaning a corresponding trademark registration was automatically created in the UK for each of these marks. Owners of still pending applications were given until the end of September 2021 to file corresponding UK applications which would benefit from the same filing and priority dates. Otherwise, to obtain protection of your trade mark in the UK, you can either file an application with the UK Intellectual Property or file a Madrid Protocol application designating the UK.

See our resource on protecting your trademark in the EU or your trade mark in the UK for more information.

Trademark registration in other jurisdictions

With the increasing power of Asian, Eastern European and South American markets, you may want to expand the reach of your goods or services, and thus your trademark, outside North America and the European Union.

Many Asian and South American countries, such as Brazil, operate their trademark systems on the basis of single-class applications, requiring a separate application for each class. This is distinct from Canada, in which an applicant may claim more than one class or goods and/or services in a single application. Note that each additional class of goods and/or services claim is subject to an additional fee. Depending on your budget for trademarks in these countries, it may be useful to determine the key goods or services for these jurisdictions and apply for registration in association with only those goods and services.

See our resource on applying for a trademark protection in Brazil for more information.

Changes to Canada’s Trademarks Act and Newly Available International Trademark Applications

The passage of Bill-C31 – Budget Implementation Act in 2014 and Bill C-59 – Budget Implementation Act in 2015 brought significant changes to the way trademarks are registered and enforced in Canada. These bills were intended to make the Canadian filing system more congruent with that of other jurisdictions and ease the trademark application process.

Bill C-31 amended the Canadian trademark filing system to allow Canada to implement the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), the Singapore Treaty on the Law of Trademarks (Singapore Treaty), and the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol).

The Nice Agreement provides for the grouping of goods and services in trademark applications into 34 classes of goods and 11 classes of services with explanatory notes regarding the grouping criteria for each class. Today, every trademark application must include goods and services classed accordingly. The filing and renewal fees for trademark applications in Canada now depend on the number of classes of goods and services claimed therein. This was one of a number of changes which accompanied Canada’s accession to the Nice Agreement, Singapore Treaty, and Madrid Protocol and which came into force in June of 2019. For more information, see our dedicated article on the changes to the Canadian Trademarks Act.

The Singapore Treaty and the Madrid Protocol are both focused on improving ease of registration for trademark owners. While the Singapore Treaty focuses more on national filing standards such as the reduction of business compliance costs, the Madrid Protocol provides increased ease of international filing through a reciprocal trademark registration system between over a hundred signatories.

Administered by WIPO, the Madrid Protocol allows trademark owners to register their marks in multiple jurisdictions with a single application. Rather than filing multiple applications, in multiple languages, and paying multiple sets of fees, the Madrid system allows an applicant to submit a single application, in one language, and pay a single set of fees to request registration of their trademark in any number of jurisdictions. Applicants are asked to designate in their application the jurisdictions in which they are seeking protection (which may include any countries which are among the 105 signatories to the Madrid Protocol). Each Office of the designated jurisdiction will perform substantive examination according to their domestic laws and must grant or refuse protection within 12-18 months from the notification date of its designation. If an applicant receives a notification of provisional refusal, they may appeal the decision.

Although there are certain disadvantages to filing an international trademark application under the Madrid Protocol - most significantly, the dependence of protection on the continual existence of the Canadian application (if the Canadian application is cancelled within five years of filing, so are the trademark registrations allotted through the Madrid Protocol system unless you file for them separately in their respective jurisdictions), it represents a valuable option to improve the system for Canadian businesses looking to obtain foreign trademark protection.

See our resource for additional information on the Madrid Protocol and filing an international application for trademark protection.

Conclusion

If you are planning to expand your business outside of Canada, it is important to remember that your Canadian trademark registration offers you no protection abroad. Accordingly, applying for registration of your trademarks in other countries is recommended, and should be done within six months of your application filing date in Canada so a convention priority claim may be made.

We directly prepare and arrange for the filing of trademark applications in the United States for Canadian applicants and can arrange other foreign trademark applications through our network of associates. Contact us now if you would like our help filing trademark applications abroad or with developing your trademark application filing strategy.