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4 Reasons to File a Trademark in Canada

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.

A Trademark Registration in Canada Provides Important Legal Protections

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Common law trademark protections are available to unregistered trademarks in Canada, but as the new law changes are implemented, those protections will be weakened significantly.  Registered trademarks, on the other hand, are afforded important legal protections indefinitely, with renewals every fifteen years.  These legal protections include:

  • Preventing others from registering a confusingly similar mark.
  • Publicly claiming ownership of the mark by using the ®
  • Exclusive use of the trademark throughout Canada.
  • Legal protection in infringement disputes.

In addition to these essential legal protections, registered trademark owners in Canada have some additional benefits not granted to common law trademarks.  The Combatting Counterfeit Products Act (CCPA) allows trademark owners to record their rights with the Canadian Border Services Agency, who will then make owners aware if suspicious products bearing their mark show up at the border.  Registered trademark owners will also be able to file for a Canadian domain name (.ca), which may increase website traffic and ultimately business success in the country.

A Registered Trademark is a Valuable Asset

As you grow your business, you’ll likely make many purchases, from inventory to manufacturing equipment.  These investments in your business are certainly essential to your success, but they probably won’t appreciate over time.  On the contrary, a registered trademark is an affordable investment that actually increases in value over time.  As your brand grows, so will your trademark’s value.  This is true for a trademark registered in the United States, or, in other countries around the world such as Canada.

Your trademark is also a valuable and effective marketing tool.  When you begin to use the ® symbol, consumers will inherently view your brand with a higher level of legitimacy.  The exclusive rights granted to you as a Canadian trademark owner allow you to control your brand, which in turn, builds brand loyalty.  With a ‘.ca’ domain name, Canadian customers will be able to easily locate your business online and to recognize your validity to do business in the country.  These benefits will have a direct effect on the success of your business.

The decision to register a trademark in the United States is often easy, but where to go from there may be more challenging.  Develop an international trademark plan focused on where you are doing business now, and where you hope to be doing business in the future.  There are several reasons to begin international registration in Canada.  With trademark law changes on the horizon, now is the perfect time to file a trademark registration in Canada.

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