Beyond Canadian Trademark Registration

Dave MacDonell

Dave MacDonell

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Trademark Registrations in Canada, USA and Europe

What happens if you don’t register your trademark in each country in which you operate?  Well, the first thing you should do is to sit down with an experienced trademark lawyer in Canada to discuss alternative means of foreign trademark protection. Your trademark lawyer will also be able to advise you as to the strengths and weaknesses of each of your options.

There are four major international treaties protecting trademark registration globally. The Paris Convention for the Protection of Industrial Property (the “Convention “), the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods and the Trademark Law Treaty are treaties regulated by the World Intellectual Property Organization or WIPO for short. The WIPO is an agency of the United Nations. The fourth treaty, the Agreement on Trade Related Aspects of Intellectual Property Rights or “TRIPs”, is regulated by the World Trade Organization and not the WIPO. Canada is only a signatory to the Convention and TRIPs.

The Paris Convention for the Protection of Industrial Property

The main advantage to Canada being a signatory to the Convention, is that it prohibits the unequal treatment of a foreign trademark owner, meaning that signatory countries are required to treat foreign trademark applicants as a domestic citizen. For example, when a Canadian owner of trademark seeks trademark registration in the US, the USTPO (the United States’ equivalent to the CIPO) must treat the Canadian applicant in the same way it would treat a US applicant. As with most treaties, however, the convention lacks enforcement provisions. This means that there are no penalties imposed on signatory countries that violate the treaty. Still, signatory countries, tends to abide by the treaty for political reasons.

The Agreement on Trade Related Aspects of Intellectual Property Rights

Because it has an enforcement mechanism built-in, the TRIPs gives better protection to trademarks in foreign countries than the Convention does. Under the TRIPs, trademark owners can seek injunctions and other provisional measures against trademark infringers in signatory countries.

Another way to enforce trademarks in foreign jurisdictions is to sue in foreign courts. However, bringing a lawsuit in a foreign jurisdiction can be expensive and time-consuming. Additionally, not all signatory countries have updated their trademark laws to bring them in line with the international standards. Where a country does maintain international standards of trademark law, bringing a lawsuit in that country may prove to be the best option for obtaining a judgment against an infringer, especially when Canadian jurisdiction cannot be established.

Bringing a lawsuit in a domestic court is another means of trademark protection. The main disadvantage of this option is that it can be difficult to establish Canadian jurisdiction over a trademark infringer from another country. The primary way to establish jurisdiction is to locate property in Canada that is owned by the foreign infringer.

Whenever possible it is advisable to seek registration in all countries in which you operate since international registration will provide the most comprehensive protection overall. Registration may prove to be cheaper in the long run, especially when compared to the cost of pursuing the alternative means of foreign trademark protection discussed above.

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