Trademark protection is territorial. Rights of a U.S. federally registered trademark extend only throughout the U.S. and not across the border to our neighbor to the north. There are a few good reasons why a brand owner would want or need to extend U.S. trademark protection across our northern border to Canada.
Reason #1 – Keep The “Language” Police Away
Any U.S. company selling products in Canada would undoubtedly have products ending up in the province of Quebec. As such, it should be wary of the “language” police. Under the Quebec Charter of the French Language, all text (including any trademark) on a product, must also be in French unless it is deemed to be a “recognized” trademark within the meaning of the Trademark Acts. This is especially troubling for English language trademark containing words that can be translated into French. Although common law trademark rights have been interpreted to be “recognized” by the courts, the “language” police have taken a narrower view in their enforcement. A pending trademark application would not necessarily be acceptable to the “language” police; only a registered Canadian trademark would. Without a Canadian trademark registration, to be in compliance with the Charter of the French Language, a company would need a separate packaging/label for products sold in Canada, and have to ensure the translated mark does not infringe on any third party’s trademark rights. Getting a Canadian trademark registration is not necessarily complicated nor costly. Therefore, the best practice and a sure way to keep the “language” police from issuing a fine (which can range from CAD$1,500 to $20,000) is to secure a Canadian registered trademark for a mark in English so that it may be used in English.
Reason # 2 – Getting a Canadian Trademark Registration is Similar to Getting a U.S. Trademark Registration
A U.S. company that already has a U.S. trademark registration would find the Canadian process of securing trademark registration very similar. A Canadian trademark application can be filed based on actual use, proposed use, and/or foreign registration and use (such as a U.S. trademark registration). In order to secure a Canadian trademark registration, it is not necessary to use the mark in Canada if it is based on a U.S. registration and use of the mark in the U.S. However, it is advisable to use the mark, especially during the first three years after registration, to preclude third parties from seeking cancellation of the registration. It can take more than a year to secure a Canadian trademark registration. Therefore, it is a good idea to plan ahead before doing business in Canada, especially in Quebec.
Reason #3 – Secure a .ca Top Level Domain
An online presence is the most cost-effective way to expand a business into Canada. Without a physical presence in Canada, a U.S. company is not entitled to secure a top level domain name that includes a trademark ending with .ca unless the trademark is a registered Canadian trademark.
Reason #4 – Cheaper to File Now and What’s Next for Canada
U.S. companies may be familiar with the international trademark scheme called the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”), which has been in practice in the U.S. for many years. Canada announced in 2014 its intent to accede to the Madrid Protocol and the Nice Classification. Since that time, Canada has been working towards modernizing its IP regime and aligning its practices to conform to the requirements under the Madrid Protocol and Nice Classification. We expect the accession to the Madrid Protocol will take place in early 2019. Canada has already implemented, on a voluntary basis, the Nice Classification. As U.S. attorneys are already familiar with the Madrid Protocol and Nice Classification, we can facilitate future Canadian filings. Along with its accession to the Madrid Protocol, it is anticipated that the government fee for Canadian trademark application will increase. Currently, the government fee to file a Canadian trademark application is CAD $250 regardless of the number of goods or services or the number of classes the goods and services fall under. Once the Nice Classification becomes mandatory (also likely in early 2019), the government fee for a Canadian trademark application will be based on the number of classes of goods and services. Therefore, it would be much cheaper to file now (especially a multi-class application)!