Area of Law: Intellectual Property
Answer # 312
Obtaining a Trademark in a foreign countryRegion: Ontario Answer # 312
Currently, a Canadian trademark does not protect your rights in foreign markets. To protect your rights as the registered owner of the trademark in other countries where your trademark will be used, you should apply to register the trademark in those countries.
Changes to the Trademarks Act – international trademarks
On June 17, 2019 the new, amended Trademarks Act came into force. To be more competitive internationally, Canada is modernizing its trademark laws to be in line with the international community. These changes have enabled Canadian innovators to compete more effectively in the global market, as well as attract foreign investors to Canada. This includes introducing a simpler and more financially beneficial application process for those seeking to obtain and maintain protection for their trademarks internationally.
Specifically, Canada has agreed to join the following international trademark agreements:
- Singapore Treaty – relating to the Law of Trademarks,
- Madrid Protocol – relating to the Madrid Agreement concerning the International Registration of Marks, and
- Nice Agreement – establishes the International Classification of Goods and Services (When applying for a trademark, applicants have to select the class which the good or service to be trademarked falls within according to the Nice system).
International Trademarks under the Madrid Protocol
The Madrid Protocol allows Canadian applicants to apply for International Registration (IR) with any of the current 104 members covering 120 countries with a single application. Conversely, foreign applicants are able to designate Canada in their Madrid filing. This IR can reduce the cost and time of submitting separate applications where the applicant wishes to register in multiple foreign jurisdictions.
How to file for an international trademark – eligibility
Before you can file for a trademark in a foreign country you must:
- Meet certain eligibility requirements: you must be a Canadian citizen, be a resident of Canada or have an industrial or commercial establishment in Canada.
- File a trademark application (known as a basic application) or obtained a trademark registration (known as a basic registration) in Canada first. Refer to #308 Trademark applications for more information on how to do this.
Once these requirements are met you can then file an application to register a foreign trademark under the Madrid Protocol system.
Filing an application under the Madrid Protocol system
Under the Madrid Protocol, eligible applicants can request trademark protection in multiple countries (known as contracting parties) using one application form.
Applications for international registration originating in Canada are filed with the Canadian Intellectual Property Office (CIPO), known as the office of origin. CIPO then certifies their content and forwards them to the International Bureau of the World Intellectual Property Organization (WIPO).
- Applications are made in one language
- One overall payment is made in one currency, the Swiss Franc (CHF).
- Applications are examined according to the legislation and laws existing in each of the designated countries.
Applications must be made through the Madrid e-Filing system found on CIPO’s website. The system:
- is in both English or in French
- provides an easy step-by step process
- automatically calculate fees, including the WIPO filing fee and the fee for each contracting party that has been designated.
No fee is required for CIPO to certify an application for international registration. However, fees must be paid to the International Bureau of WIPO for both the filing of the international application and for each country where the trademark is being applied. Fees are paid to WIPO in Swiss Francs (CHF) through the Madrid eFiling system.
For more information regarding filing instructions, filing dates and fees, refer to the Canadian Intellectual Property Office.
The laws are often different in foreign countries and it can be very complicated to register a foreign trademark. For legal assistance with registering your foreign trademark, or other intellectual property matters, contact our preferred lawyers and see who’s right for you:
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