Global Trademark Protection and Enforcement

Oct 16 2019

The globalization of business may make the world seem smaller but it makes your brand potential much greater. The following are some issues to consider in order to realize the value of your brand on a global scale:

Filing and Registration

  • Canada recently acceded to the Madrid Protocol, which provides for a simplified, centralized filing mechanism at WIPO for incoming and outgoing trademark applications and also consolidates trademark registration, renewal and maintenance for all designated member countries.
  • Outgoing (for Canadian citizens, residents or those with industrial or commercial establishments in Canada and who have an existing Canadian trademark application or registration)
    • consider filing an application for international registration of your Canadian mark at WIPO. Any number of member countries can be designated for registration and we can manage your portfolio to ensure the broadest scope of protection.
  • Incoming (for foreign applicants and practitioners)
    • appoint a registered Canadian agent for all CIPO-issued correspondence. When Canada is designated at WIPO for an international application or registration, CIPO will only correspond directly with the applicant or an appointed Canadian trademark agent. CIPO will not engage with foreign representatives, with the exception of an initial courtesy letter to that effect. To ensure that all correspondence from CIPO is timely received, relayed and advised upon if necessary, an appointed Canadian representative can assist in this regard.

Your trademark is a valuable asset and should be protected to the broadest extent possible. In addition to global filing and registration, care should be taken to monitor your markets for unauthorized or improper use by third parties. You may consider implementing any or all of the following:

  • Watch Service – either country-specific or worldwide trademark watch for publications of relevant trademark applications. A watch service can provide an early warning of marks that are being used or will be used in the marketplace and will help establish a benchmark for monitoring infringement.
  • Customs/Border Enforcement – record your trademarks with an appropriate customs authority (for example, the Canadian Border Services Agency Request for Assistance program). This will help facilitate seizure and destruction of imported counterfeit merchandise and put counterfeiters on notice.
  • Brand Registry – record your trademarks with online commercial marketplace vendors (for example, Amazon) to take advantage of their tools and features to protect your brand
  • Licensing – ensure that your mark is properly licensed and being used appropriately and consistently by your licensees in all markets.

Please do not hesitate to contact us for further information regarding any of the above or other IP issues or about appointing us as your Canadian agent. 

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Tags: CIPO, Filing, Guide, Registration