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Why Canadian Trademark Protection Matters to the U.S, Now More Than Ever

Long-awaited changes are finally coming to Canadian trademark law in June 2019.  They are expected to increase the threat of trademark piracy in Canada. At the same time, they will make it easier, quicker, and less expensive for US brand owners to work directly with US trademark lawyers to file for trademark protection in Canada and obtain registrations there, even before doing any business in Canada.  

Canada is aligning its trademark law and process with what some consider the best features of US and other international trademark systems.

For example:

  • Proving use of the mark in Canada before granting a registration: GONE!
  • Filing in Canada through US trademark counsel under a WIPO Madrid Protocol international registration: ADOPTED!
  • Using familiar “Nice Classification” descriptions of goods and services long accepted in the US and worldwide: ADOPTED!

With the many good changes coming, there will also be challenges.  

For example:

Because use of the mark in Canada will no longer be required for registration, Canadian trademark experts anticipate that trademark pirates — long well-known in China, for example — will focus on Canada.  They are expected to file applications for familiar US brands that appear to have strong potential to enter the Canadian market. There are already reports that this is happening, with large numbers of suspect filings. One goal for the pirates is to leverage their Canadian registrations to exact payment from legitimate senior brand owners.  

Lesser downsides under the Canadian trademark law after June 2019 include increased application filing fees, especially for applications covering a wide range of goods and services.  And, the duration of registrations will decrease, from 15 years to 10 years, before renewal is required.

With foresight and a little planning, it is possible for US trademark owners to get the best of both the old and new Canadian trademark laws, especially if they act between now and June 2019.

Here is how that would work:

Trademark applications that are now filed in Canada and all those filed between now and June 2019 will get the benefits of the current law — such as less expensive application fees, broad descriptions of goods and services without additional charges, and the like — as well as the best of the new law — such as registration without the requirement of use in Canada.

Applications filed for the first time after June 2019 will get the additional benefits and efficiencies that come from WIPO Madrid Protocol international registrations, including ease of filing, registration, and maintenance by US trademark counsel, without the need in many cases to hire and work through local Canadian attorneys .  

Canada is the largest market worldwide for US export goods and services (worth a reported $337 billion annually) and, in the other direction, over 60% of all Canadian trade is done with the US, according to data from the World Trade Organization. A common language and shared consumer culture contribute to making the national borders of the two economies open: media, including marketing and product information, flow freely back and forth.  

For all those reasons, Canada is an important jurisdiction for the protection of US trademark rights, making the looming threat of trademark piracy there especially worrisome.  

Consider whether your brands and those you are considering are adequately protected in Canada, whether you are currently active there now or not.  If you have questions, contact your trademark attorney at OWE to explore whether we can help you.

— Contributed by John C. Baum

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