Registration and Use Abroad – Bringing a Foreign Mark to Canada

In common with other countries, Canada’s Trade-mark Act allows trademark owners who have obtained registration of their trademark in their home country and used the mark somewhere in the world to apply for registration of that mark (the “foreign mark”) in Canada based solely upon that foreign registration and use. With this filing basis, it would not be necessary to rely on the “proposed use” or “actual use” filing bases in the Canadian trademark system.

For registering a foreign trade-mark in Canada, here’s a quick intro on the details:

• The application for the Canadian registration of the mark is filed like a typical “use” application. But some of the information to be provided is different.
• It’s not necessary to have actually obtained the foreign registration before you file the Canadian application. As long as (1) your foreign application has been filed in your country of origin and (2) you have had some “use” (ie, some sales) of your goods or services outside Canada, then you can file the Canadian application on this basis.
• And if you file the Canadian application within six months of having filed your foreign application, the Canadian application may qualify for priority treatment in the Canadian system. That is, the Canadian system will give your Canadian trademark application the same filing date as in the foreign application.
• The trademark examiner will vet the application as submitted, and any deficiencies can be corrected. A typical deficiency is to revise the description of the goods or services listed in the foreign registration to accord with Canadian practice.
• However, the Canadian application will not be allowed to enter the advertisement for opposition phase until the foreign registration has actually been issued, and a government-certified copy of the foreign registration certificate has been submitted to CIPO. (Compare the US practice, where they will take even a photocopy of the registration certificate, uploaded by PDF.)
• So, eventually, the registration date and registration number for the foreign trademark will need to be provided to CIPO.
• It’s critical to note that the foreign registration must be in the applicant’s country of origin. (In this context, “country” includes a European Community trademark.) In most cases, a trademark owner will start the process by filing a trademark application in their country of origin. But some trademark owners prefer to file in the country where their major market is. (Here in Canada, some Canadian businesses just file straight into the US, and ignore Canada.) But if you don’t file in your country of origin, then this filing basis is not available for a Canadian trademark application. That trademark owner would have to file on one of the “use” bases.
• The second critical requirement is that the applicant must be able to assert actual “use” of their foreign trademark in at least one country anywhere in the world. In the trademark world, it’s very important to understand that “use” has a narrow, special meaning. In short, it means a real sale of your good or service to a real customer where the mark as registered (or applied for) was associated with the sale (eg, a clothing label or on the packaging).

So owners of foreign trademark registrations that have “used” their mark anywhere in the world can obtain protection for their brand in Canada, even without first having to sell their products or services into the Canadian market.