As a U.S. trademark owner, you understand that the legal protections provided to you by a federally registered trademark in the United States are essential to protecting your brand and growing your business. Those protections, however, only apply to trademark disputes in the United States. To gain protections internationally, you must register with countries where you plan to do business now and in the future. Because of Canada’s new trademark laws and location, it may be an important place to start. Here are 4 reasons to file a trademark in Canada.
Canada Will Soon be a First-to-File Country
As of June 17, 2019, several changes will be made to Canada’s trademark laws. The change with the biggest impact determines how trademark rights are granted. Canada, like the U.S., has long been a first-to-use country. This means that the first person to use the trademark in commerce is typically granted rights to the mark. This summer, however, Canada will begin determining trademarks on a first-to-file basis, which could have lasting implications for future trademark filers.
Once the new law takes effect, anyone can register a Canadian trademark, whether they’ve used the mark or not, as long as they are first to file. While this change benefits new businesses who have created a mark but may not be able to demonstrate use at the time of filing, it also ushers in more bad faith registrations. This occurs when a person with ill-intent knowingly registers a trademark that exists in another country or one that is in use but not yet registered. Bad faith registrants hope to profit from others’ trademarks, either by selling counterfeit products or by ransoming the trademark to its rightful owner at a later date.
If Canada is part of your international trademark plan, either now or in the future, it may be wise to consider registration as soon as possible. Laws do exist to deter bad faith registrations and to protect trademark owners, but the process is costly and can take significant time. Simply being the first to register your trademark in Canada may be the best deterrent from bad faith registrants, or anyone looking to register a confusingly similar mark.
Canada Offers Easy Expansion
In today’s global economy, it isn’t farfetched to think that a company in the U.S. might do business internationally. Whether you plan to manufacture goods in China or your e-commerce business has customers worldwide, you’ve likely thought about expanding your trademark protections to other areas. Geographically speaking, however, the most sensible place to start that expansion may be Canada. With similar demographics, a steady economy, and close proximity to where you are currently doing business, registering your trademark in Canada could be a wise business decision.
The process to register your trademark in Canada is fairly simple as well. After the June 2019 law changes take effect, you will no longer need to document use for registration, which will simplify the application process. In addition, Canada will enter into the Madrid Protocol. This treaty allows registrants to apply to any of its more than 90 member countries on a single application, in their home language. In many cases, it may still be beneficial to apply directly to the Canadian Intellectual Property Office, or CIPO, but if Canada is one of many countries for which you plan to register, the Madrid Protocol may be the right path for you.