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.
New Trademarks Act
On June 19, 2014, the new Trademarks Act received Royal Assent. It is anticipated that the new Act will be proclaimed into force in 2019. To be more competitive internationally, Canada is modernizing its trademark laws to be in line with the international community. It is expected that the changes will enable Canadian innovators to compete more effectively in the global market, as well as attract foreign investors to Canada. 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.
The Madrid Protocol will allow Canadian applicants to apply for International Registration (IR) with any of the 92 countries that are currently members. Conversely, foreign applicants will be 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.
The Nice Agreement establishes the International Classification of Goods and Services. In addition to describing the mark, the applicant will have to select the class which the good or service to be trademarked falls within.
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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