02/16/2018 – International Trademark Law Update: “Trademark Registration in Canada”
By Jeffrey E. Jacobson, Esq.
As a reference, there are two distinct trademark systems for acquiring trademark rights in a particular mark. There is a “first-to-file” system, which exists in countries such as China and France. This system provides protection to the first entity to file for a registration for a particular name for the good or service listed in the registration. Conversely, the United States follows a “first-to-use” system. This system provides trademark protection to the first entity to file an application and who actually utilizes the mark in commerce for the listed goods or services.
Currently, Canada may require actual use of a mark in commerce to perfect and obtain trademark rights in a mark. In addition, there are procedures under Canadian Trademark law where an individual can request an applicant to prove use of the mark (section 45).
Shortly, registration of trademarks in Canada is evolving. With new regulations, actual use will no longer be required to perfect an owner’s rights in mark; instead, a “first-to-file” system shall be adopted. In the interim, protection in North America can be very important to your brand and should be looked into.
This article is not intended as legal or business advice, as an attorney or other professional specializing in the field should be consulted. Please contact Jeffrey @ firstname.lastname@example.org for additional information.
© 2018 The Jacobson Firm, P.C.