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Where Should I Register My Trademark: A Guide to Selecting Jurisdictions

By: Christopher Heer, Toba Cooper, Daryna Kutsyna | Last updated: September 11, 2018

Once you have invested time and money in selecting or designing a name, slogan or logo for your business, it is important to make sure that you protect that asset. While registered protection is not a requirement for some protection of your marks (see our article on the differences between registered and unregistered trademarks), without registered protection it can be difficult and costly to keep others from riding on your commercial coat tails.

Trademark protection, however, is not universal. In other words, registering a trademark in one country does not give you trademark rights in other countries. While there can be unregistered rights in some jurisdictions for unregistered marks based on a relatively high threshold level of use and recognition, for the most part, valuable and enforceable trademark rights come from trademark registrations.

As such, before filing your first trademark application, you should have a plan of which jurisdictions you will seek protection in and when. Below are some key factors to consider.

1. Where am I currently conducting business?

The main question to ask yourself when determining where to register your trademark is whether you conduct business in that country. If you are selling goods or services in association with the brand in any significant quantity, you should probably file for registration in that country. Obtaining a registration in that country will permit you to exclude others from adopting and using the same or a confusingly similar trademark anywhere in that country.

2. Where do I plan to conduct business?

The second consideration should be your expansion plans. Can you see your business eventually expanding to sell goods or services beyond the jurisdiction(s) you are currently selling in?  This consideration is especially important when considering the prevalence of e-commerce and the increasing ease of international shipping and delivery. The reach of your brand can be vast. While protecting your brand everywhere in the world it is used may prove difficult, strategic applications in your largest future markets can prove to be a vital decision in maintaining brand exclusivity and avoiding confusion and dilution.

3. Jurisdictional differences

It is important to understand how countries differ in terms of the application process and timelines, costs associated with prosecution, and scope of protection in a particular jurisdiction.
Outlined below are some details related to the two most common jurisdictions in which Canadian business owners register: Canada and the United States.

 

Canada

United States

Time to Registration

1-2 years if opposition proceedings are not initiated Six months to a year for a standard undisputed application

Cost to register

Government fees: $450 ($250 at filing and $200 at registration) + applicable professional fees $275 USD for a federal registration in per class plus $100 per class when filing statement of use if application filed on the basis of intent to use + applicable lawyer fees

Length of registration

15 years (renewal possible) 10 years (renewal possible), declaration of use needs to be filed after 5 years

Scope of protection

Right to sole use in Canada; when challenged, burden of proof is on the opponent to demonstrate use is legal Presumption of ownership; allows owner to bring infringement claims against others in court

For more information on registration in other jurisdictions, contact us now for a complimentary and confidential initial telephone phone appointment.

4. Can I take advantage of convention priority?

Fortunately, many countries have acceded to a treaty which provides a right of convention priority. Convention priority allows applicants to retain their priority filing date – the date on which they applied for registration in their home country – if they apply in elsewhere within six months of filing the original application. 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 be treated as if it were effectively July 1, 2018. This will allow you to see spread out your trademark registration costs by delaying foreign trademark filings by up to six months.

5. Impending changes to legislation

There are significant changes that are coming to the Canadian trademark system that are anticipated to come into effect in 2019. The amended Trade-marks Act and Trade-marks Regulations will better align Canadian trademark law with that of Canada's major international trading partners including the United States and the European Union. In particular, Canada will join the Madrid Protocol that will make it easier for Canadian businesses to protect their trademarks internationally through an international trademark application filing which is not currently available to Canadian applicants.

For more information on the nature of these changes, please see our article on upcoming changes to the Trademarks Act. While the exact date of accession to the new rules is still unknown, we will update this article when more information becomes available.