Global Brand Expansion: Why Canadian Trademark Owners Should Consider Whether the International Registration Is Right for Them | Smart and Biggar



Until just a few years ago, most Canadian brand owners doing business abroad had limited options to protect their trademarks outside of Canada. They were forced to file separate applications in each country of interest, except in the few regions where a regional application is available (such as for the European Union).

This decentralized approach meant that protecting the global brand was an expensive and sometimes difficult endeavor for Canadian businesses. Filing an application directly in a foreign jurisdiction usually requires the services of a local trademark attorney in each country or region and often raises frustrating technical hurdles such as the need for translations, powers of attorney and formalities such as notarization. and legalization of documents.

Traditional approach to trademark registration at the international level

Now, a new option is available to Canadian brands and businesses looking to extend and protect their trademarks beyond Canada’s borders: the international registration.

On June 17, 2019, Canada joined the international registration system (sometimes referred to as the “Madrid Protocol”, after the treaty in force). The system, which is administered by the World Intellectual Property Office (WIPO), allows trademark owners to file a single application and pay a set of fees to seek trademark protection in up to 108 countries and member regions (representing 124 countries of the total). The system also allows brand owners to manage their global brand portfolio by updating ownership and managing renewals through a centralized portal.

International registration process (IR) for trademark filing

Image: A diagram showing the dollars of brands going to Canada, then to WIPO, then to individual countries

How to file an international trademark registration application in Canada

To file an application for an international trademark registration, a Canadian applicant must have an existing trademark application or registration with the Canadian Intellectual Property Office (“Canadian rights”). The applicant can then file an international registration application with WIPO on the basis of existing Canadian trademark rights and select the member countries and regions where trademark protection is sought.

WIPO examines the international application for formalities and, if applicable, issues the international registration (IR) and sends it to local trademark offices in selected countries and regions. Each office examines the request and decides whether or not to grant protection in its jurisdiction. IR represents a set of rights granted in each country or region.

Benefits and risks of filing an international registration

Filing an IR application avoids the need to retain the services of a local lawyer to file separate applications in each foreign jurisdiction and eliminates the requirement for translations, powers of attorney and other formalities. Overall, the IR application process is an attractive alternative to direct deposit in foreign jurisdictions and can save brand owners a lot of time, effort and money.

However, there are certain legal limitations and financial drawbacks to the international registration system which make it unusable in all circumstances or for all trademarks and brands. For example:

  • WIPO’s fees for processing the international application are not insignificant and an IR application usually only makes financial sense when 3 or more foreign member countries or regions require trademark protection.
  • The RI will depend on the fate of the underlying Canadian rights for five years. This means that if the Canadian application or registration expires or is limited during the five-year dependency window, the IR (and the grant of rights in each of the selected jurisdictions) will lapse or be limited accordingly. For example, if an aspect of the Canadian application is challenged by the Canadian Trade-marks Office (under review) or by a third party (in opposition), the mark could be rejected in whole or in part. party, thus threatening the DR. If a Canadian owner is wondering whether their trademark will be registered successfully in Canada, proceeding through international registration can be particularly risky.
  • Canadian rights, IR and associated rights held in selected member countries or regions will all be owned by the same legal entity. In addition, the assignment of rights arising from an international registration can only be made to an entity that is based in a country that is part of the international registration system. As a result, the system offers limited flexibility in diversifying and managing the portfolio by geographic area or between multi-jurisdictional subsidiaries.
  • Filing an IR application does not eliminate the need to proceed with trademark authorization in all jurisdictions of interest. There is no substitute for local attorneys in every jurisdiction to identify potentially conflicting marks, provide advice on the inherent registrability, and prepare the application in a way that avoids potential pitfalls.

These risks can be mitigated through careful planning and consultation with legal counsel experienced in international trademark protection and a clear understanding of the business goals and objectives of trademark owners in each market.

Conclusions

Overall, the option to seek international registration is a positive development for Canadian trademark owners with global trademark requirements and may very well be a better alternative to the traditional approach of filing. directly in foreign jurisdictions (especially if Canadian rights are already registered).

However, international registration is not ideal for all situations. Careful thought is needed to develop a comprehensive trademark filing strategy that optimizes budget and reduces risk, taking into account the specific circumstances of the trademark owner. Brand owners should therefore consult with a Canadian trademark agent who can discuss these circumstances and create a tailored approach to global trademark protection.



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