With the reality of today's global and online marketplace, international trademark protection is increasingly critical.

Is my Canadian trademark registration valid elsewhere?

No. Registering a trademark in Canada does not protect it abroad. Trademarks must be registered in each jurisdiction. Although having a trademark registered in Canada may facilitate the process in other countries, a separate application must be filed in each of the countries of interest.

The majority of countries have a first-to-file system, i.e. even if you use your trademark in certain countries without having registered it, a third-party filing it could prevent you from using it in this market and force you to have to change your trademark.

As your business expands beyond Canada (new markets or overseas suppliers and distributors), you will need to protect your trademark by filing for registration in the relevant countries.

Why is it important to protect my trademark internationally?

When your business strategy involves exporting or manufacturing internationally, protecting your trademark quickly can save you a lot of trouble. 

Your trademarks, including your company name, product or service name, logo, slogan, or even the shape or packaging of your products, can be among your company's most valuable assets. It is crucial to protect them adequately.

Registration in another country allows you to obtain the monopoly on the use of this mark in this country and to prevent a third party from obtaining it for you.

As trademark rights are territorial, i.e. they are granted country by country, the mere fact of owning a trademark registration in Canada or the United States does not protect your trademark in other countries.

Moreover, in most countries, the only way to acquire recognized trademark rights is to file a trademark registration, which is often given to the first filer regardless of the commercial use of the mark. This means that even if you are using your trademark for commercial purposes, if you did not apply for trademark registration abroad soon enough, someone else may legally own the trademark in a particular country. .

Finally, registration in another country generally makes it possible to obtain customs surveillance in an attempt to prevent the circulation of counterfeit products.

What if someone else registers my trademark in a foreign country?

If a third party registers your trademark in a foreign country before you do, it could cause a lot of problems. Here are examples of the risks of neglecting the protection of your trademark internationally:

• You may lose the right to use your trademark and be forced to change your name in the targeted country
• You may be violating someone else's rights without knowing it.
• The foreign applicant may hold the trademark hostage and you may be forced to buy back (at a high price) your own trademark if you are the victim of an IP theft that cannot be proven
• The foreign depositor may disrupt the manufacture, shipment or distribution of your products in or from the country in question
• The foreign owner may use or authorize others to use the mark on a competing or copied product of lesser quality and thus damage your reputation

How to avoid this? You must register your trademark without delay in the country concerned and monitor. 

How do I know where to drop off?

Essentially, overseas filing considerations are largely business decisions. It is recommended to protect the brand in countries where:

• You offer or plan to offer your products and services.
• Revenue streams or consumer bases are important to your business.
• You manufacture your products.
• You have commercial activities in progress or in negotiation. For example, distributors, partnerships or manufacturers.
• The risk of counterfeiting, copying or piracy is high. We are talking here about “defensive” deposits in countries such as China, Brazil and India.
• The relevant market for your products and services is expanding or already large.

We invite you to provide us with the list of countries of interest so that we can establish the best filing strategy as well as a quote.

How can I register my trademarks worldwide?

Since there is no “global” or worldwide trademark registration, it can be very expensive to protect your trademark anywhere in the world.

However, it is possible to protect your trademark worldwide nationally (country by country) or using different international treaties. Indeed, there are agreements allowing protection in several countries simultaneously, including the Community trademark (covers all the countries of the European Union), registration with the OAPI (covers 16 African countries), registration with the ARIPO (covers 10 African countries) or an international registration at WIPO.

Indeed, registration abroad has been simplified by the Madrid Protocol, which is an international system administered by theWorld Intellectual Property Organization (WIPO).

It is therefore possible to register a trademark with WIPO by selecting specific countries or by choosing to protect your trademark in all the countries concerned. It is important to know that although registering a trademark through the Madrid system can be more cost effective when considering multiple countries, it can still cost tens of thousands of dollars to register a trademark with the PMOI.

What is "priority"?

Priority is an advantage that allows you to file the trademark in your country of origin (at first) and wait 6 months before filing the application elsewhere in the world by claiming the priority of the initial application. In other words, this strategy makes it possible to protect the trademark in the countries of interest, retroactively, as if it had been filed at the same time as the initial application.

This strategy offers trademark owners six months after the initial application to finalize their international trademark strategy and allows them to spread the costs of filing an application in more than one country while benefiting from the the original request.

Foreign registration applications can be filed at any time and it will still be possible to file the mark elsewhere in the world after the expiry of the priority period, but at the risk that it has already been filed by a third party.

The importance of planning well

In conclusion, integrating exporting into your business strategy requires rigorous preparation, particularly from a legal point of view. 

The planning of the protect your brand internationally from the start (ideally within the 6 month priority period) can save you a lot of time, money and unnecessary hassle.

This is why it is suggested to surround yourself well in order to follow the legal advice of professionals. 

To take advantage of a free first consultation to benefit from our fixed price packages adapted to SMEs, contact us.