Introduction
Important market for international brand owners
Missing correspondence and lost rights


Introduction

A little over one year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada.

This article explores some of the key reasons why international brand owners should consider designating Canada in international trademark applications and outlines the importance of appointing a Canadian agent to monitor and oversee international applications designating Canada.

Important market for international brand owners

Brand protection in Canada is economically critical for most trademark owners.

Canada's economy has long been at the top of the G7, and Canada is experiencing record population growth. Canada has especially strong economic ties with the United States, with the two countries enjoying the largest trading relationship in the world. Canada is the United States' largest customer and buys more goods from the United States than China, Japan and the United Kingdom combined. Canada also continues to play a major role in international trade relations through:

  • the Comprehensive Economic and Trade Agreement with the European Union;
  • the Trans-Pacific Partnership with 10 other Pacific Rim countries; and
  • most recently, the United States-Mexico-Canada Agreement.

Canadian consumers are also regularly exposed to spillover advertising and are well aware of international brands, making Canada an important market for foreign brand owners looking to protect their brand in an economically important market and across North America.

Finally, brand owners seeking protection against the import and export of counterfeit goods can leverage a Canadian trademark registration, and record it with Canada's customs authorities for monitoring, for heightened cross-border protection.

Missing correspondence and lost rights

Notably, for international applications designating Canada, the Canadian Intellectual Property Office (CIPO) will not deposit all correspondence with the World Intellectual Property Organisation or send correspondence to a foreign representative. Rather, CIPO will send correspondence only to the applicant or an appointed Canadian trademark agent.

This means that important communications with critical deadlines – which may be unwanted or misunderstood by clients – will be brought to the attention of foreign agents or representatives only if they are forwarded on by clients. To avoid undue risk and the potential loss of rights, it is strongly recommended that a Canadian agent be appointed on all Canadian applications to ensure that all relevant correspondence (eg, examiner's reports, approvals and default notices) are received and that all due dates are docketed.

This is particularly vital as CIPO examines all applications on both absolute and relative grounds and commonly issues examiner's reports, such as in connection with goods and services objections, citation of confusing marks and descriptiveness or non-distinctiveness objections.(1)

For further information on this topic please contact Tierney GB Deluzio or Mark Evans at Smart & Biggar by telephone (+1 416 593 5514) or email ([email protected] or [email protected]). The Smart & Biggar website can be accessed at www.smart-biggar.ca.

Endnotes

(1) For further information on this topic please see "Where is my CIPO mail? What to know about correspondence for Madrid applications" and "Yes, CIPO really will be writing to your client instead of you".