Trademark protection is important for any business that plans to create a recognizable brand. Unfortunately, many businesses fail to understand the significance of registering their trademarks. The filing of trademarks internationally may be an important consideration for a brand. Let’s look at some of the advantages of international registration compared to local or national registration.
Filing of trademarks
The Madrid Protocol allows a trademark to be registered internationally. Currently, Canada is not a member of the Madrid Protocol. However, steps are being taken to allow Canadians to file trademark registrations using the Madrid Protocol in the future. Currently the only way an entity based in Canada can file an international trademark application is if it has a “real and effective industrial or commercial establishment” in a member country. This work-around requires the member country to be the “home country” for the purpose of trademark registration.
Cost of registration
Generally, the filing of multiple national trademarks is more expensive than filing an international trademark under the Madrid Protocol. Under the Madrid Protocol, it may be possible to register in multiple countries for less than the cost of filing national trademarks in each of those same countries.
Scope of protection
The protection afforded by a national registration is limited to the country in which it has registered. Registration also provides the owner with the ability to register their trademarks in other countries that adhere to the Paris Convention for the Protection of Industrial Property. An international registration under the Madrid protocol allows for the registration of a trademark in up to 92 countries.
Greater control of the trademark portfolio
The registration and maintenance of an international trademark may be handled entirely by your trademark agent. The status for each designated country may be monitored in real time using a World Intellectual Property Organization (WIPO) online database. This eliminates the need for sending a query to each representative. The renewal date for each country in which registration has been obtained through the Madrid Protocol is the same. There is, therefore, no need to keep track of multiple renewal dates.
Descriptions of specific products/services for each designated country
When you file for an international trademark, the statement of goods or services can be restricted country by country as desired to meet local requirements. An application originating from an international application should be based on the application/registration in the country of origin.
Transfers/licenses
When changing ownership of an international registration, an application form detailing the change is submitted. The process is similar with licenses. The process of recording a change of ownership of several national registrations can be costly.
Disadvantages of filing International Applications
While there are many benefits to the filing of international applications, there are also disadvantages. The main disadvantage of the Madrid Protocol is that if the original trademark application or registration is attacked and deemed invalid or unregistrable in the first five years, the corresponding international applications are expunged at the same time. Another potential disadvantage for Canadians is that the Canadian Trademark Office requires a more narrow description of goods/services than some other countries. It is, therefore, possible that broader protection could be available by filing directly in those countries instead of filing through an International application.
It is important to know whether or not the countries of commercial importance to you are members of the Madrid Protocol and understand both the benefits and disadvantages of the system before you proceed. You can learn more about Trademark law in Canada and international trademark protection by visiting Prowse Chowne LLP.