Registering your trademark abroad: A vital part of building foreign markets and exports

As a Canadian Trademark Agent for many years, I have witnessed a pattern of Canadian businesses being hesitant to secure their trademarks or brands outside Canada other than the United States, whether they are large or small to medium sized businesses.

In some cases, it might be because they have no expansion plans outside Canada, but more often it’s because they had focused solely on the United States as a current or potential foreign market.

This of course makes sense since it’s a large neighbouring economy, however, in the current climate, many Canadian companies are thinking of expanding their export plans to include other more far-away trading partners like Mexico, the EU, the UK and Australia for example for their products and technology.

Securing your brands in other jurisdictions is a crucial part of exporting to foreign markets as it greatly reduces the risk of costly and disruptive trademark disputes and businesses can continue to benefit from their current branding, marketplace identity and reputation. Foreign trademark registration essentially offers the same protections as a Canadian trademark registration does for Canada in most countries, and most Intellectual Property (IP) protection systems have the same basic steps (application, examination, publication, and registration if there is no third-party opposition).

Filing an individual application in each country of interest makes sense if just one or two jurisdictions are involved, but there is a more efficient and cost-effective way to file in multiple countries at once, thanks to the Madrid Protocol that Canada joined in 2019, which allows Canadian businesses to apply for trademarks in up to 194 member states, from Afghanistan to Zimbabwe, in either English or French with a single application via the World Intellectual Property Organization (WIPO).

You first need either a trademark application or registration with the Canadian Intellectual Property Office (CIPO), and from there, your Trademark Agent sends it to WIPO through a special electronic process and ticks off all the countries in which you want to file, and WIPO handles sending it out to the individual designated countries. The resulting foreign registrations will mirror the rights outlined in your Canadian trademark with CIPO.

Once the trademark is reviewed by each individual country there may be more requirements or hurdles, but the initial step of getting an application filed and thus securing a filing date has never been easier.

Your Canadian Trademark Agent (an individual who has passed qualifying exams and is licensed by the College of Patent And Trademark Agents or CPATA to represent you before CIPO) will also most likely have a vast international network of associate agents and firms that they can work with to either file directly on your behalf in that country, or intervene and assist when necessary in an application sent via WIPO in their country to meet any specific requirements and achieve registration. Unless companies have an in-house counsel in charge of the IP, your Canadian Trademark Agent is usually the first point of contact for managing your domestic and international trademark portfolio.

I have used both routes (direct national filings and through WIPO) for my clients and both have their benefits and specific uses. In either case, it’s always satisfying to help our clients secure foreign trademarks so that they can grow their exports, and I hope that this article will encourage Canadian manufacturers and tech companies to dream beyond Canada and the U.S.