Global brand expansion: Why Canadian trademark owners should consider whether international registration is right for them

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

This decentralized 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 such as the need for translations, powers of attorney and formalities such as notarization and legalisation of documents.  

Traditional approach to filing trademarks internationally

Image: A diagram shows Trademark dollars running to individual countries

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 June 17, 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 centralized portal.

How to file an application for an international trademark registration 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 (the “Canadian rights”). The applicant can then file an application for an international registration with WIPO based on the existing Canadian trademark rights and select the member countries and regions where brand protection is sought.

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

International Registration (IR) process for filing trademarks  

Image: A diagram showing Trademark dollars going to Canada and then to WIPO and then to individual countries

Benefits and risks of filing an International Registration

Filing an application for an IR 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 IR application process is an attractive alternative to filing in foreign jurisdictions directly and can save brand owners considerable time, effort and expense.

There are, however, certain legal limitations and financial drawbacks to the international registration system which make it not suitable in all circumstances or for all trademarks and brands. For example:

  • WIPO’s fees for processing the international application are not insignificant and an application for IR typically only makes financial sense when 3 or more foreign member countries or regions require brand protection.
  • The IR will be dependent on the fate of the underlying Canadian rights for five years. This means that if the Canadian application or registration lapses 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 any aspect of the Canadian application is challenged by the Canadian Trademarks Office (in examination) or by a third party (in an opposition), the trademark could be rejected in whole or in part, thus threatening the IR. If a Canadian owner is concerned about whether its mark will successfully register in Canada, proceeding by way of international registration may prove particularly risky.
  • The Canadian rights, the IR and the associated rights held in the selected member countries or regions will all be owned by the same legal entity. Moreover, assignment of rights stemming from an IR can only be made to an entity who is based in a country which is part of the international registration system. Accordingly, the system provides limited flexibility in portfolio diversification and management by geography or across multi-jurisdictional subsidiaries.
  • Filing an application for IR does not eliminate the need to conduct clearance of the mark in all jurisdictions of interest. There is no substitute for local counsel in each jurisdiction to identify potentially conflicting marks, provide advice on inherent registrability, and prepare the application in a manner which is likely to avoid potential pitfalls.

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.  

Conclusions

Overall, the option to pursue international registration is a positive development for Canadian brand owners with global trademark requirements and might very 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 optimizes 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.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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