Trademarks: Essential Differences Exist Between Canada And The United States

Author:Mr John Rogers and David Spratley
Profession:Davis LLP
 
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Previously published in Franchising World

Branding is a key element of any successful franchise system, and registering and enforcing trademarks is a key element of protecting an important brand. Canada and the United States have similar systems for registering and protecting trademarks, but important differences exist that might pose a trap for the unwary. Franchisors on one side of the 49th parallel who are considering expanding to the other side should be aware of these differences, both to avoid pitfalls and to be able to communicate clearly with trademark advisors.

Similarities

The underlying trademark laws are similar in Canada and the United States, as both have their origins in British trademark law. Both countries have trademark legislation (the Lanham Act in the United States, the Trade-marks Act in Canada), and both recognize "common law" unregistered trademark rights in certain circumstances.

There are also several important similarities in trademark procedures. Applications to register trademarks in both countries must describe the relevant products or services and set out the basis of the application. An application with an earlier filing date has priority over a later application, although prior use rights are relevant in opposition proceedings and litigation. And both countries are members of the Paris Convention, so applicants who file a Canadian or American application can file in the other country within six months and claim priority as of the first filing date, provided they meet certain residency and other requirements.

The general filing and registration procedures are similar as well. Filed applications are reviewed by a trademarks examiner for meeting the formal requirements, confirming that the products and services are clearly and properly described, and that there are no pre-existing registrations or applications that pose a bar to registration. If the examiner does not make any objection, or if the applicant successfully overcomes any objection, the approved application will be published so that interested third parties can oppose the application if they wish. If there is no opposition (or if the applicant succeeds in an opposition), the mark will be ready for registration. Applications based on prior use or on foreign registration (and, in Canada, foreign use) will be registered upon payment of the final registration fee. Applications based on proposed or intended use will stay pending until the applicant files...

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