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

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 setting out the jurisdictions in which you will seek protection and the approximate dates applications will be filed in those jurisdictions. Below are some key factors to consider.

1. Where am I currently conducting business?

The main question to ask yourself when determining whether to register your trademark in a given jurisdiction 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. Trademark protection is nationwide, so even if you are operating only in Ontario, for example, you would seek registration in Canada. The same is true in other countries--obtaining a registration in a given country will enable you to exclude others from the adoption and use of the same or a confusingly similar trademark anywhere in that country, thereby allowing you to build to your benefit a reputation in your mark that cannot be appropriated by a competitor. For example, if you sell products in Ontario, and someone in Alberta starts selling the same goods using the same trademark, having a registered trademark can help in enforcing your rights against the Alberta company, and in reserving the Alberta market for online sales or future expansion.

2. Where do I plan to conduct business in the future?

The second consideration should be your expansion plans. Can you see your business eventually expanding to sell goods or services in jurisdiction(s) other than those in which you are currently selling? Consider where your customers will be, not just where your head office is located. This consideration is especially important given the prevalence of e-commerce and the increasing ease of international shipping and delivery, and the adoption of trade agreements which serve to reduce barriers to trade by eliminating tariffs applied to goods moving between parties to the agreement. 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 with and dilution of your mark. As a best practice, international applications for your mark should be filed as soon as possible. The longer the delay in registering, the more likely it becomes that your mark may be unregistrable over another application or registration. In Canada, an applicant does not have to demonstrate use of the trademark in order to obtain registration. Absence of a formal requirement for use of a trademark to obtain registration empowers trademark “trolls” – a moniker for those known to file for marks with the singular goal of later selling them to those having a genuine interest in obtaining the rights to the marks.

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 basic details pertaining to the two most common jurisdictions in which Canadian business owners register their trademarks: Canada and the United States.

There are ways to ensure you are on the fastest possible timeline to registration in Canada in particular. The include using only pre-approved goods and services descriptions in your application, or, if eligible under the Trademark Office’s criteria, requesting expedited examination of your application.

For more information on registration in these and other jurisdictions, contact us now for a complimentary and confidential initial telephone 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 elsewhere for the same mark within six months of filing the original application. For example, if you filed an application for your trademark in Canada on July 1, 2023, you would have until January 1, 2024, to file an application in the United States and have your filing date be treated as if it were effectively July 1, 2023. This will allow you to spread out your trademark registration costs by delaying foreign trademark filings by up to six months. The significance of an earlier filing date is that your application will take precedence over later-filed applications when it comes to an assessment of confusion. A mark will be refused registration if it is confusingly similar or identical to a mark in an earlier-application or registration. An earlier filing date increases the likelihood of your mark being allowed over other confusingly similar marks.

5. International Trademark Applications Now Available to Canadians

In 2019, Canada joined the Madrid Protocol which made it easier for Canadian businesses to protect their trademarks internationally through an international trademark application filing. By way of the Madrid Protocol, applicants for trademarks can file a single international application for a mark which identifies multiple jurisdictions in which protection is sought. The application will still have to be examined in each jurisdiction; however, this system nonetheless offers certain advantages over the filing of multiple independent applications around the world. While you likely won’t need to retain local counsel in each jurisdiction designated in your application, if you are filing in the US, only a US attorney can file the trademark application with the USPTO. Canadian law firms like Heer Law can work with a US attorney to coordinate the filing of your trademark, without added complication for you. While not having to retain local counsel in multiple jurisdictions is undoubtedly a good thing, certain disadvantages are also associated with the Madrid system. See our dedicated article for more information on the Madrid Protocol.

For more information on international trademark applications and how to proceed with trademark registrations in other jurisdictions, contact us now for a complimentary and confidential initial telephone appointment.