So you're selling online and you're looking to protect your trademark internationally.

April 18th, 2016

YES, BUT...

JOHANNE AUGER, partner and trademark agent

The Internet is an international showcase, which means that your online presence allows you to sell your products and services worldwide. Knowing that acquiring domain names is not the only thing you need to consider, you are looking to register your trademark internationally. The intention is good, but reality is more complicated.

In fact, there is no international trademark registration system as such. So what should you do when your company’s activities are mainly or partially based online, and you cannot immediately determine where your market will be located?

Although there is an international application system that makes it possible to register your trademark in all countries designated in the application, Canada has yet to sign the agreement (commonly known as the Madrid Protocol) that allows companies and citizens to file such international applications with the World Intellectual Property Organization (WIPO). However, steps are currently being taken in this regard, and Canada should be signing the Protocol in 2018.

Nevertheless, even once this is the case, applicants will still be required to designate the countries where they would like their trademark to be registered in their international application. Indeed, trademark protection is territorial, and it cannot be obtained internationally, unless applications for registration have been filed in every country or jurisdiction, or unless all of the countries that have signed the Madrid Protocol are designated in a prospective international registration application combined to the filing of applications in all the other countries that have not signed the Protocol.

So how can you adequately protect your trademark when you are selling online? First, it is generally recommended that you protect your trademark in your home country, where you will presumably be selling in the short-term. This registration could also potentially serve as the basis for registering your trademark abroad, and if you file your foreign application within six (6) months of your Canadian filing date, you could even claim the home country filing date as your foreign filing date.

In addition to filing an application to register your trademark in your home country, you should also determine which countries you are targeting directly with your offer of products and services by considering your short- and medium-term marketing plans, generally a five-year plan. Indeed, you would be wise to file trademark applications in all countries you are targeting directly, if you know which ones they are, of course.

But what should you do when your website is more like a fishing line in the sea and you do not really know where the demand will come from? In this case, it will be important to keep a close eye on where your requests for information and online sales are coming from so that you can adjust your trademark protection strategy accordingly. Indeed, since most countries and jurisdictions grant trademark rights to whoever is “first to file,” you will need to react quickly and file an application for registration in the countries or jurisdictions where an interest has been shown in your products and services.

During discussions with prospective partners, distributors, representatives, licensees, or any other party who might use your trademark abroad, it is also important to protect yourself against any usurpation of your trademark by such parties if negotiations hit a roadblock. Otherwise, such a party could, unfortunately, prevent you from using your trademark in their territory, or do so through another potential partner. Outside of filing an application for registration in countries where you are holding discussions, it is a good idea to have confidentiality and non-disclosure agreement containing a specific clause pertaining to trademarks signed by prospective foreign partners.

If your products are manufactured abroad, it is also recommended to file preventive registrations in the countries where your products are manufactured. This will help to prevent your own products, bearing your own trademark, from being held at the border of the country where your products are made. This unfortunate scenario is far too common when a third party has made sure to register your trademark or a similar mark in connection with products that are identical or similar to yours in the country where your products are manufactured, and made arrangements with the customs authorities to prevent these products from being exported, even though the products bear your trademark!

No matter how much we talk about filing applications for registration and eventually obtaining foreign registrations, the trademark still needs to be eligible for registration and available to be used and registered. Although it is not possible to foresee all scenarios—and even if it were, doing so would be far too expensive—a good strategy for protecting trademarks abroad takes into account all of the foregoing considerations, and will need to evolve as your products and services break into foreign markets and in accordance with your company’s five-year plan.

The international showcase afforded by the Internet easily implies a wide range of possibilities for your products and services. The legal issues related to using and registering your trademarks abroad can multiply just as easily. Our trademark experts in the BCF Internet Group can help you identify your priorities in terms of your international trademark protection strategy, and guide you through the evolution of your company’s international component, by considering not only your own marketing plans, but also the presence of your competitors on a global scale.

Johanne Auger is a member of BCF’s Internet strategic team, which offers our clients strategic advice regarding their online presence. This is a continually evolving environment which calls for the expertise of a multidisciplinary team like that of BCF.