6 Things You Must Know About Your Trade-Mark: Part 5

The internet has transformed entire industries (bought a set of encyclopaedias lately?) and other ideas are much weaker than they used to be. National borders fall into this category, at least when talking about intellectual property and trade-marks.

Like most institutions, intellectual property law developed over a time when nations had much more control over their borders. Even though customs laws couldn’t stop everything from entering a country, it was still relatively easy to prevent things like books or logoed materials from arriving. As well, people’s lives were much less transglobal than they are today. Although there were definitely international brands, the majority were local or national in scope.

Trade-mark law grew up in this environment. This means that although a registered trade-mark has pretty much the same application across Canada it has little force outside the country. This is so even though Canada’s trade-mark regime shares most of its concepts with other common law countries such as the United States and Britain.

There are a few exceptions. For instance the shared trading partnership between Canada and the US means there are a few priority dates which might grant earlier protection than if it was between Canada and, say, Brazil. The last few years have also seen a growth in the power of the World Trade Organization and international treaties. Therefore, many countries, Canada included, are harmonizing their trade-mark laws if not recognizing other countries’.

There isn’t much a trade-mark owner can do about this state of affairs other than know it exists and take appropriate steps to fill in the gaps. Primarily, know that a registered trade-mark in Canada does not entitle you to much protection in other countries, including the US. To get better protection, you will have to go to that country and follow their process to obtain a registration under their laws. There is no such thing as an “international registered trade-mark”. This means more expense, of course, but if products are being sold in a country it is probably necessary to at least scope out the protections required.