Canadian trademarks and patents for international companies
We have discussed why Canadian companies should file trademarks in this article. However, it may also be beneficial for foreign companies to file trademarks or patents in Canada, even if they currently do not do any business here.
For many internationally based companies, Canada is not high on their list of priorities when it comes intellectual property protection, primarily due to the size of our market and logistical issues in having to cover such a large country!
However, international companies, especially those based in the US, have very good reasons to apply for their IP and more specifically trademark rights in Canada. Companies in other countries that export their goods to Canada should also strongly consider registering IP rights in Canada as well.
The following are a few good reasons to apply for a trademark or patent in Canada.
1. IP rights are regional
When you apply for a trademark or patent in your home country, you may think that the protection extends to other countries as well, when this is not the case. For example, a US patent or trademark registration will not protect those rights outside of the US unless you’ve filed corresponding applications elsewhere. Similarly, a Canadian registration will not offer protection outside of Canada.
Furthermore when it comes to patents, if your patent application has been published in your home country, it may actually prevent you from filing patents elsewhere because the invention may be considered to have been disclosed in the other country.
But if you primarily operate your business in your home jurisdiction, then does this matter? The answer is in the next section.
2. Business operations are often not regional
A company can be based in Canada, but offer their products around the world.
Thanks to various domain name services, it is now easy to apply for and obtain a .com domain name from anywhere. A Canadian company does not need to register a .ca domain name, and register a .com domain with your company’s trademark or a similar trademark if you haven’t already registered the domain.
Even if they only use a .ca domain name with your trademark, if they’ve invested resources into online marketing and SEO, there is a good chance that their website will still outrank yours in search engine results. A potential customer (from anywhere around the world) who ends up going to this Canadian company’s website instead of yours may end up costing you sales because the customer may choose to purchase the service from the Canadian company or re-run the search with different terms that do not list your website.
So how would a Canadian trademark help in this situation? Because having a Canadian trademark will at the very least deter a Canadian company from adopting that trademark in Canada. If you have a Canadian trademark registration or even a pending trademark application, it will act to block others from applying for the same or similar trademark in Canada. In processing a trademark application, the Canadian Trademarks Office will search its database for prior applications or registrations, and refuse applications that are confusingly similar with existing applications or registrations. For this reason, many companies run trademark searches before adopting a new name or brand, and will choose another trademark if their potential mark is already registered or applied for.
For patents, having a Canadian patent will also prevent a Canadian company from making, selling, importing or exporting their products if any of these steps take place within Canada.
Finally, having a Canadian registration makes it easier for you to pursue legal action against a Canadian company – it allows you to sue them in Canada, where most of their assets are likely to be. If they service customers in your home jurisdiction where you have a registration, you can try to sue them at home, but because they will likely not have assets in your home country, enforcement will often be difficult and costly.
3. Protect products that are exported to Canada
With a Canadian trademark or patent, you can control who can sell the products, as well as the quality of the products in Canada.
Once you’ve developed your brand and product in your home country, a common next step is to expand and export your products abroad, including to Canada. However, without the necessary IP rights in Canada, you have no control over who sells the products or the quality of the products, and open up the potential for counterfeits to be sold. This is especially important for companies based in the US who sell products in Canada, due to its proximity as well as Canadian consumers having similar tastes and preferences in general. This may also be important for brands in countries that serve a large demographic in Canada, for example Chinese food brands that are consumed in large volumes by the Chinese community in Canada.
4. The filing costs in Canada are relatively modest
The cost to file a trademark or patent is relatively low compared with many other countries. For trademarks, the government fee to file a trademark is $330 CAD for the first class of goods or services, and $100 for each additional class of goods or services. Because of this, many basic applications can be prepared and submitted for under $1,000 CAD after government and legal fees. If you currently sell or plan to sell in Canada, there is little reason not to apply for a trademark here.
Similarly, patent filing fees are also relatively modest in Canada. The application filing fee is $400 CAD (or $200 for companies with less than 50 employees), and simple patents can be prepared and filed for approximately $5,000 CAD after government and legal fees. If you have already filed a patent application in your home country or elsewhere, the fee is further reduced for a Canadian filing.
For more information on filing a trademark or patent in Canada, please feel free to contact us.
Disclaimer: The resources published on this website are available for informational purposes only and should not considered legal advice on any subject matter. By viewing these resources, the reader understands there is no solicitor client relationship between the reader and JZC Intellectual Property Law. This website should not be used as a substitute for legal advice, and readers are urged to consult legal counsel on any specific legal questions concerning a specific situation.
