Trademarks 101: Going Global – Protecting Your Trademark Abroad

This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.

The internet has changed the face of global commerce. With a click of a few buttons and valid credit card details, a consumer in any country can purchase the goods and services of others from anywhere in the world from the comfort of their own home. This rapidly evolving global marketplace is driving the need for trademark owners to consider registering their trademarks outside of their local jurisdictions.

Why You Should Consider Trademark Protection in Foreign Countries

Due to the borderless landscape of the internet, we strongly suggest that you consider trademark protection in foreign jurisdictions when assessing the benefits to your company’s trademark portfolio as a whole. Having a trademark registered in Canada does not permit you to enforce the rights granted to you against a third party who may be infringing your trademark in any jurisdiction(s) outside Canada.

Unfortunately, for some trademark owners, the thought, or need, for obtaining a trademark registration outside of Canada only occurs once a problem is encountered, such as the selling of knockoff goods, termination of a licensed users’ rights gone awry, or in the case of trademark squatting. Considering the possibilities of your brand beyond the scope of “right now” is simply good risk management for every trademark owner. As previously discussed in our post on registration, the reasons to register a trademark in Canada are easily applicable to any other jurisdiction.

When You Should File: Within Six Months of Filing in Canada

We generally advise clients to file abroad within six months of filing in Canada to get a “deemed” filing date retroactive to your original Canadian filing date. This benefit is enshrined in the Paris Convention for Protection of Industrial Property, one of the oldest active treaties relating to international trademark law. The Paris Convention permits for the filing of a trademark in any treaty member jurisdiction within six months from the initial filing date in another member jurisdiction. The subsequently-filed application will be able to claim the filing date from the initial application, and subsequently take precedence over any confusingly similar application filed in the priority period. As the protection offered by a trademark registration is limited to the country in which it is obtained, trademark owners are encouraged to take advantage of the six-month filing window permitted by the Paris Convention and seek trademark protection in any jurisdiction where their goods may be sold or their services may be provided.

Filing in the United States of America

With the United States and Canada being in such close proximity, the first point of international commercial expansion for Canadian business owners is generally the United States of America. Both Canadian and United States trademark law recognize “common law,” that is unregistered, trademark rights based on the goodwill that has accrued solely from using an unregistered mark. In order to obtain a valid trademark registration, the United States Patent and Trademark Office typically requires that a trademark must actually be used in ordinary commerce prior to the issuance of a trademark registration certificate.

However, United States trademark law also permits owners of foreign registrations to finalize and obtain a trademark registration in the United States of America solely on the basis of a registration in the owner’s home jurisdiction. If you have a trademark registration in Canada, you can obtain a valid trademark registration in the United States of America without having conducted any business there. As our neighbor to the south is, logically, the first point of foreign global commerce or e-commerce expansion for Canadian business owners, the ability to obtain a trademark registration without actually conducting business there is advantageous. The ability to prevent intervening parties from registering confusingly similar names or designs, along with the benefits of enforcement against infringing parties in the United States marketplace can be very beneficial to every Canadian business owner.

Filing in Europe – European Community Trademarks

There are several initiatives which enable trademark owners to obtain trademark protection in multiple jurisdictions with a single registration. The most well-known, multi-jurisdiction is the Office for Harmonization in the Internal Market (“OHIM”), which is the formal name for the European Union’s trademark office. Obtaining a trademark registration through OHIM permits an owner to have trademark protection in all countries which are members of the European Union. The Office for Harmonization of the Internal Market follows the “first to file” strategy (as opposed to the first to use strategy of Canada and the United States). Obtaining a valid trademark registration in the European Union will secure your trademark rights in the event that a competitor or any other trader wishes to secure the same or similar trademark, even if you have not had an opportunity to commence actual use of your goods or services in a member country of the European Union. The renewal term is every 10 years, however it is advisable that actual use of the trademark commence in at least two member countries before the third year of registration to secure your trademark rights in the event of any cancellation proceedings.

Filing in Emerging Asian and South American Markets

With the ever changing face of the global economy, many markets in Asia and South America are emerging stronger than ever, and should certainly be considered when assessing your foreign filing options. Many countries in Asia and South America only permit “single class” applications. If your Canadian application covers a wide range of goods and services, it would be advisable to determine which products and/or services would be considered core or essential to the trademark(s) of your organization a whole. While the costs of obtaining a trademark registration in Asian or South American countries are not generally excessive, the cost of prosecution of multiple applications can add up.

Additionally, some trademark offices in these jurisdictions require power of attorney documents or priority documents to be legalized and/or authenticated with the local consular office prior to filing the official application. Due to some of the turn-around times at the local embassy or consular offices for the processing of documents, we strongly recommend that if you are considering filing for trademark protection in any country in Asia or South America to discuss those options with your trademark professional at the time of filing the original priority application in Canada. This will ensure that all the necessary documents can be filed with the applicable trademark office without any time constrictions.

While it may not be necessary or financially feasible to obtain a trademark registration in every single jurisdiction, many companies have strong business reasons to file in more than one country. We recommend regularly taking stock of your current consumer market areas and, if it appears that your organization is conducting business transactions outside of Canada, or plans to conduct business outside of Canada in the future, to consider applying for foreign trademark protection and discuss your filing options with a trademark agent. Being proactive in obtaining foreign trademark registrations can, and will, help alleviate the financial burden of defending against any potential unauthorized third-party usage of your trademarks in the future.

Key Takeaway: Trademark protection is on a country-by-country basis, so consider foreign filings. Ideally, you should file for protection in foreign countries within six months of filing in Canada.

About the Trademarks 101 Series

MLT Aikins’s Trademarks 101 is a series of posts about trademark law designed to provide a plain-language overview of trademark law for businesses, marketing and adverting professionals, and in-house counsel. Trademarks 101 comes from the MLT Aikins trademarks team: Chris Woodland and Kursty Bansley. These posts are intended to be a supplement to – not a replacement for – the advice of an experienced trademark professional.

The five posts in this series include:

  1. Start Smart by Developing a Strong Trademark
  2. Pre-screening and Searches – Ensuring Your Trademark is Available
  3. Five Reasons to Register Your Trademark
  4. Use it or Lose It – Eight Tips for Keeping Your Trademarks Strong
  5. Going Global – Protecting Your Trademark Abroad

Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.