Canada: Trademarks And Trade Wars – Developing An International Trademark Strategy

Last Updated: July 3 2018
Article by Cynthia Rowden and Sharyn Costin

Recent news about trade disputes and resulting trade disruptions is a reminder of how businesses may need to adapt to rapidly changing economic and political factors by shifting sales and marketing efforts to new countries, which in turn reinforces the importance of having a global trademark strategy. Brand protection steps that have focused only on current markets may make it difficult to easily and efficiently enter new markets without first investing significant expenses in brand selection, clearance and protection.

Trademark registration can provide numerous advantages – including country-wide rights regardless of where the business operates, notice to third parties of trademark claims, simplified enforcement, and in many countries, eligibility for country code top level domain name registration, plus local Trademarks Office and Customs assistance in policing rights and preventing copycats or counterfeits. In many regions unless a mark qualifies as "famous", enforcement against an infringer or counterfeiter is extremely difficult, if not impossible, until the mark is registered. Further, the sooner rights are secured by applications, the lower the risk of a third party scooping the name, intentionally or otherwise. 

While most businesses initially focus their attention on domestic trademark registration, early development of a global trade and trademark strategy early on is important. For most North American businesses, trade with international neighbors is the most likely first step for business expansion, and trademark protection in those neighboring countries should go hand in hand with such expansion.  However, businesses need to plan for global growth, especially when fast-changing political shifts may compel businesses to consider alternative foreign markets. 

What factors should businesses consider when developing an international trademark strategy? Here are some suggestions:

  1. All businesses own trademarks. If properly used and registered, trademarks will become important company assets, and impact the overall value of the company. Time and energy invested in brand development, clearance, marketing and awareness should be mirrored by legal steps to secure those brands at home and abroad.
  2. Clearly define the business activities, keeping in mind likely future growth. Trademark rights are tied to specific goods and services. Create a list that not only reflects current marketing plans, but also anticipates future growth. While a business might believe that its future lies with T-shirts or pharmaceuticals, plan for a broader list of goods and services that anticipates expansion, as well as the appropriate channels of current and future distribution (i.e. online/e-commerce activity).
  3. Prepare for foreign expansion. Companies don't want to celebrate their first major international contract, only to find that that their marks are not available, and products cannot be sold without risk of infringement litigation, or substantial investment in new branding, packaging and advertising. Identify key foreign markets as early as possible, and choose brands that will be available in local and foreign markets. Your trademark advisor can assist with searching options – even just a "knock out" search on foreign trademark registers may quickly identify future problems.
  4. Start by filing locally, then use international laws to claim rights as of the domestic filing date. Most industrialized countries recognize treaty "priority rights" that permit a company to obtain a filing date for international applications that is the same as home country or other first-filed applications, if foreign filings are made within six months. That gives companies an opportunity to review and prioritize foreign brand protection, and better manage trademark budgeting. The Madrid Protocol, an international filing agreement, permits efficient and cost-effective filing in many jurisdictions (and will become available to Canadian businesses after the coming-into-force date of amendments to the Trademarks Act) also offers cost-savings on international filings, and should be part of an international branding strategy.
  5. Few companies can afford to get "worldwide" trademark rights for a new brand. Rather than aim for global protection right away, base your foreign filing strategy on three criteria: (i) are there any "must do" foreign filings – either for marketing reasons, or branding security?; (ii) where does the business hope to be selling in the next 3-5 years?; and (iii) where is the competition is located?Most trademark advisors will recommend filings in major markets, which for North Americans, would mean their immediate neighbours. However, securing rights in countries that are well known for their aggressive trademark strategy will usually put China at the top of most priority lists. Identifying future markets are key, particularly since in many countries, it will take years to get trademark protection.For existing companies, knowing how business expanded globally should provide a guide for new brands. For new businesses, consider where the market leaders do business, and follow their lead in trademark filings. Finally, while a business might not intend to sell in certain foreign markets, consider where major competitors or counterfeiters are located, since, as noted above, rights in many countries are dependent on registration, and without local filings or registration, you might not be able to prevent registration of similar marks that are used on exported goods, or effectively deter infringing or counterfeit exports.
  6. Take advantage of regional registration systems. The most important is the European Union.  While businesses may secure national rights on a country-by-country basis, filing a European Union trademark application offers the chance of protection in all 28 current members of the EU, with tremendous cost savings and efficiencies. (Note: for now, Great Britain remains a member of the EU, and it is likely that any registered EU marks will obtain protection in Great Britain, after Brexit, without separate registration.)
  7. Anticipate local language and typestyle uses. While English may be the preferred brand use, foreign markets may adapt more easily to a local language version of the mark. In some jurisdictions, local language versions may be used by copycats. Brand protection for obvious translations/transliterations may be a way to deter unfair competition and control the adoption of a translation/transliteration for your brand before the public fills the void and invents an unfavourable one for you.  
  8. In most countries, use is not a prerequisite to registration. Trademark applications can be filed, and rights reserved, before plans to sell goods or offer services are finalized, and the resulting registration may be enforced even before those goods/services are sold locally. At the same time, registrations can be cancelled for non-use. For example, in Canada, any person may request the registrant to prove use of any registration that is more than three years old, and failure to use the mark in the form in which it is registered can result in cancellation. Many other regions have a five-year term – meaning that companies need a way to diarize for use requirements, and take steps to maintain rights, either by commencing use, or refiling.
  9. Be aware of local use requirements. Registration validity and enforcement may be impacted by failure to use proper trademark notices, or follow local licensing requirements – which may require written agreements, notice of license, or government recordal. At the same time, take advantage of local rights that come with registration. For example, many countries permit registered trademark owners to record their marks with customs authorities, which assist with anti-counterfeiting activities.
  10. Update trademark portfolios regularly. Prudent practice would be to review, annually, all pending and registered marks to ensure that the portfolio reflects current and upcoming business activity. That means checking for:
  • marks in use and whether there have been any significant changes to marks
  • new marks, or decisions to drop marks
  • protected goods and services, and looking for any changes in business focus
  • countries of interest – do business plans call for a broader list of country filings?

Above all, a trademark portfolio should reflect current and projected international business activity. Plan far enough in advance to avoid surprises, costs, and unexpected delays. Share your plans with your trademark advisor and make them a part of your business team – they can advise on customized steps and strategy that maximize the value of your trademark rights around the world in the most efficient and cost-effective manner.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Cynthia Rowden
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Smart & Biggar/Fetherstonhaugh
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions