Trade-Marks
4. Protection in Other Countries
The registration of your trade-mark in Canada protects your trade-mark rights in Canada only. If you intend to sell wares or services in other countries, you should consider registering your trade-mark in each of those countries. For most people, the United States is the first foreign market in their business plan.
The nature of the process to obtain registration of a trade-mark in the United States is quite similar to that in Canada, but the United States uses a classification system for goods and services. Applicants are still required in their trade-mark application to provide a description of their goods or services in commercially acceptable terms, but additionally, it is necessary in such applications to specify the particular international class(es) of goods or services for which registration is sought. A separate filing fee is payable in respect of each international class in a U.S. trade-mark application.
It is not necessary to decide immediately upon a complete list of countries in which to seek to register your trade-mark. Canada, along with over 120 other countries (including the U.S.A.), is a member of the World Trade Organization (hereinafter, "WTO"), with the result that the nationals of each WTO member country have substantially reciprocal rights for the protection of their intellectual property rights in each other's country. One of the most important results of this arrangement is the granting, to applicants from WTO member countries, of a "convention priority filing date". This means that anyone from a WTO member country who has duly applied for a trade-mark registration in his resident country, is entitled, when subsequently filing a corresponding application in any other WTO country, to claim the priority date of the first application, so long as the further application is filed within six months of the first application. The priority filing date is frequently used to help delay the costs of filing trade-mark applications in foreign countries for six months. This extra six months provides time to see how your business is developing, and to decide whether or not to seek registration of your trade-mark in the foreign countries which are next in your business plan.
There are other international systems and treaties in place which can streamline the process of obtaining registration in foreign countries. For example, there is a system commonly known as the Madrid System of International Registration of Marks, governed by the Madrid Agreement and the Madrid Protocol, which allow its members to file a single application designating a number of member countries and have the application treated as being deposited in each of the selected member countries. On November 2, 2003, the U.S. became a member of the Protocol which will allow businesses which have an effective industrial or commercial establishment in the U.S. to take advantage of the Madrid System in countries also a member to the Protocol. Canada is not currently a member of the Madrid Union, but this system may be advantageous for businesses which have an effective industrial or commercial establishment in a member country.
Since January 1, 1996, it is also possible to obtain a single trade-mark registration which is effective in all countries of the European Union, (presently Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, the Netherlands, Sweden, Slovakia, Slovenia, Spain and the United Kingdom). A European Community Trademark can be obtained for a period of 10 years and is renewable for like terms. The registration of a European Community Trademark is available to residents of non-European Union countries, including Canada.
A more detailed analysis of foreign trade-marks is beyond the scope of this article, but our office can provide further information and advice regarding the filing of trade-mark applications in other countries at an initial office consultation. [For those interested, there is a further detailed article on the Madrid Prtocol downloadable from the "RESOURCES" page of this website.]