Trademark rights are protected ‘country by country’. You must apply for a registered trademark in each country that you want protection in. There are two ways to do this – with a ‘country by country’ approach (best for 5 countries or less) or a ‘bulk’ filing using the ‘Madrid protocol’ for many countries at once.
Priority rights
An important concept in trademark applications is ‘claiming priority’. Generally, if you file in a second country WITHIN 6 months of first filing in your home country, your second country application can ‘claim priority’ to your first domestic application. You must file in the foreign country within 6 months of your domestic application to take of this ‘backdating’ for when your rights arise. This can be very important to avoid being ‘copied’ in a foreign market.
Example. You file in Canada. A competitor than sees your mark, and files in the US. If you then file an application in the US after the competitor but before the ‘six month anniversary’ of your Canadian filing, your US filing will be able to claim priority over the competitor’s US filing in the US (i.e. treated as if your application was filed first, on the date of your Canadian application).
If you miss this 6 month window to claim priority, you can still file abroad but your application will be treated as of the date it is actually filed.
Filing trademarks in the United States
If you sell to customers in the United States (or likely will sell in the future) you need to consider filing a trademark application in the United States.
If you are worried about someone else taking your name and using it in the United States, you need to consider filing in the US to protect your rights.
Use in Canada does not give you trademark rights in the US.
A Canadian trademark application or registration does not give you trademark rights in the US.
Trademark rights in the US are built on the twin pillars of
- use in the United States (sales to customers in the US) and
- trademark registration in the United States.
Just because a mark is registrable in Canada does not mean that it is registrable in the US. In particular, a proposed mark may be ‘confusingly similar’ to a prior application or registration that has been filed in one country that has not be filed in the other. US-specific trademark searches can help identify this challenge early.
US trademark law is broadly similar to Canadian trademark law, with just enough key differences to cause serious problems for dabblers. We strongly recommend that Canadians hire experienced professionals to protect and enforce their trademark rights in the United States. Costs to register in the US are higher than in Canada – a rough estimate is double the cost of registering in Canada.
We can help. Contact us to help secure your trademark rights in the United States.
Filing Abroad
Many Canadian business wish to do business in other countries and regions of the world.
The proper trademark strategy will depend on your business strategy and the markets you are entering. Strategies differ between South America and Africa, the Middle East, and Asia.
However, in general, you can always file either ‘country by country’ (or in the case of the European Union, for the region) or you can do a bulk initial filing (application) using the Madrid ‘system’. Costs per country tend to be higher than in Canada. Generally, a bulk application is only cost-effective if you are filing in more than 5 countries at once (i.e. initial filing fees of greater than $10,000).
Contact us. We have extensive experience assisting businesses securing their trademark rights cost-effectively around the world.
