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Protecting Your Trademarks outside Canada

Introduction

As discussed in our earlier article “5 Benefits of Registering Your Trademark in Canada”, there are several benefits to registering your trademark in Canada. Registering your trademark in Canada ensures protection of the reputation of your brand by obtaining exclusive use to the words, design or slogan associated with the goods and services in your trademark registration for 15 years. This acts to prevent competitors from capitalizing on the reputation your brand has gained.

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, registration of your trademark in other jurisdictions must be done separately.

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

At the moment, the short answer is no. Although certain common law rights may apply to protect the reputation you have established through the use of your trademark if it reaches a certain threshold, those rights are not as effective or valuable as a trademark registration for enforcing your trademark rights.

Certain advantages do exist for Canadian trademark applicants to help them obtain foreign trademark registrations through the Paris Convention for the Protection of Industrial Property. 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 to supersede trademark applications in that jurisdiction that were filed at a later date than the Canadian filing date.

Therefore, it may be useful for you to file trademark applications in other countries or regions where you are hoping to get your trademark protected within six months of filing your Canadian trademark application. This may allow your foreign application to take precedence over similar but later-filed applications.

How to protect your trademark in other jurisdictions

Trademark registration in the United States

The United States, due to its proximity 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.

Like in Canada, registering your trademark in the United States confers similar advantages over mere common law rights, such as securing the exclusive right to use your trademark and 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 application and adoption of the mark to ensure that there are no confusingly similar trademarks that have been registered or are in use in commerce in the United States.

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 28 countries of the European Union.

The European Union operates on a “first to file” system, rather than the “first to use” system currently in place in Canada. There are no common law principles that protect an unregistered trademark based on use. As such registration is the only way to effectively protect your trademark and you should not rely on commercial use to justify your ownership if a legal dispute arises.

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 the scope of North America and the European Union.

Many Asian and South American countries operate their trademark systems on the basis of single-class applications, requiring a separate application for each class. 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.

Looking into the future: Canada and the Madrid Convention

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

Bill C-31 amends 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).

In practice, passage of these bills entails several changes for Canadian trademark owners seeking trademark protection internationally. As of September 28, 2015, Canada started acceding to the Nice Agreement, which stipulates the grouping of goods and services into 34 classes of goods and 11 classes of services with explanatory notes regarding the grouping criteria for each class.

While Nice Classification is not mandatory for Canadian trademark applicants until the Singapore Treaty and Madrid Protocol come into force, it is now an option to indicate the classes for the goods and services associated with your trademark in your application.

The Singapore Treaty and the Madrid Protocol are both focused on improving the 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 filings through a reciprocal trademark registration system between almost a hundred signatories.

Administered by WIPO, it allows trademark owners to register through a single application which entitles them to trademark protection in every country that is a signatory to the Madrid Protocol. While Canada has signed on to the Madrid Protocol and officially ratified the changes necessary to become compliant with it, it is not due to come into force until late in 2017 or early in 2018. When it does become official, though, it will ease the process of protecting your trademark abroad.

Although there are 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 is still anticipated to improve the system for Canadian businesses to obtain foreign 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, ideally within six months of your application filing date in Canada so a convention priority claim may be made is recommended.