Should you Register your Trademarks in Canada?

The protection of trademarks is a national matter, and in order to secure property rights in your trademarks, you must register in every country in which you market your goods and services. Canada is not presently party to the International System for the Registration of Marks (Madrid Treaty and Protocol), so that registration in Canada must be done directly in the Canadian Intellectual Property Office(CIPO).

In general, trademark registration in Canada provides the same rights, protections and benefits in Canada as trademark registration does in almost every other country in the world; the particularities in the effect of Canadian law in the trademark arena are trivial for the most part. The distinctive elements of Canadian trademark law appear in the application and registration process.

One important feature is that trademark registration and maintenance in Canada is comparatively economical. There is one official application filing fee no matter how many goods (“wares” in Canada) and services are identified in the application. In contrast, a great many countries have one filing fee for the first two or three “classes” of goods and services plus additional fees for additional classes, and some countries, including the United States, charge a filing fee for each class. Canada does not use the international system of classification mandated for parties to the Madrid system, and only distinguishes between, but does not charge separately for, wares and services.

Canada is party to several other trademark-related treaties, however. So a Canadian application can rely for priority over other applications on the filing date of an application in another country within the six months prior to the application’s filing in Canada, and for registration solely on the trademark’s registration and use in another country. A trademark that is not registered in another country can be registered on the basis of its use in Canada, of course, or its proposed use in Canada. A proposed-use application in Canada, like an intent-to-use application in the United States, once allowed for registration must be followed by a Declaration of Use in order to effect registration.

The term of registration in Canada is longer than in most other countries, fifteen years, and registrations may be renewed indefinitely, assuming continued use in Canada.

Canada, like many other countries, but unlike the United States, has a separate registration fee that must be paid prior to issuance of a registration.

For more information about extending protection of your trademarks to Canada, please contact us.