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14 December 2020
Traditional approach to filing trademarks internationally
How to file applications for international trademark registration in Canada
International registration process for filing trademarks
Benefits and risks of filing international registrations
Until 2019 most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside Canada. They had to file separate applications in each country of interest, except in the few areas where a regional application was available (eg, the European Union).
This decentralised approach meant that securing global brand protection was a costly and sometimes difficult endeavour for Canadian businesses. Filing an application directly in a foreign jurisdiction typically requires the services of local trademark counsel in each country or region and often raises frustrating technical hurdles (eg, the need for translations, powers of attorney and formalities such as notarisation and legalisation of documents).
Now there is a new option available to Canadian brands and businesses looking to expand and protect their trademarks beyond Canada's borders: international registration.
On 17 June 2019 Canada joined the international registration system (sometimes referred to as the Madrid Protocol, after the governing treaty). The system, which is administered by the World Intellectual Property Office (WIPO), enables brand owners to file a single application and pay one set of fees to apply for protection of a trademark in up to 106 member countries and regions (representing 122 countries in total). The system also allows brand owners to manage their global trademark portfolio by updating ownership and handling renewals through a centralised portal.
To file an application for an international trademark registration, Canadian applicants must have an existing trademark application or registration with the Canadian Intellectual Property Office. Applicants can then file an application for an international registration with the WIPO based on the existing Canadian trademark rights and select the member countries and regions where brand protection is sought.
The WIPO examines the international application for formalities and, if in order, issues the international registration and sends it to the local trademark office for the countries and regions selected. Each office examines the application and decides whether to grant protection in its jurisdiction. The international registration represents a bundle of the granted rights in each country or region.
Filing an application for an international registration avoids the need to retain local counsel to file separate applications in each foreign jurisdiction and eliminates the requirement for translations, powers of attorney and other formalities. Overall, the international registration application process is an attractive alternative to filing in foreign jurisdictions directly and can save brand owners considerable time, effort and expense.
However, there are certain legal limitations and financial drawbacks to the international registration system which make it unsuitable in all circumstances or for all trademarks and brands:
These risks can be mitigated by careful planning and consultation with legal counsel experienced in international brand protection and with a clear understanding of the brand owners' commercial goals and objectives in each market.
Overall, the option to pursue international registration is a positive development for Canadian brand owners with global trademark requirements and might well be a better alternative to the traditional approach of filing in foreign jurisdictions directly (particularly if the Canadian rights are already registered).
However, international registration is not ideal for every situation. Careful thought is required to develop a global trademark filing strategy which optimises budget and reduces risk, taking into consideration a brand owner's specific circumstances. Brand owners should therefore consult a Canadian trademark agent who can discuss those circumstances and create a tailored approach to global brand protection.
For further information on this topic please contact Jamie-Lynn Kraft or Christian Bolduc at Smart & Biggar by telephone (+1 613 232 2486) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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