International Trademark Law and Cross-Border Practice
This domain tests territoriality, priority, the Madrid Protocol and the practical handling of foreign applicants and Canadian applicants abroad.
Territoriality and priority
Trademark rights are territorial. A foreign registration does not create Canadian rights. Use or making known in Canada matters for entitlement and distinctiveness. Under the Paris Convention, a regular first application in a Union country gives six months to file in Canada for the same mark and goods/services and claim the earlier priority date. The deadline is not extendable.
Madrid Protocol
Canada is a Madrid Protocol member. A Canadian applicant can file an international application based on a Canadian basic application or registration; a foreign applicant can designate Canada. CIPO examines a Madrid designation like a national application and may issue a provisional refusal. The international registration does not bypass Canadian examination, classification or use requirements. Nice classification applies.
Worked example
A US company files a US application on 1 March 2024 for “LUMEN” in Class 9. It files a Canadian application on 1 September 2024 claiming priority. The six-month deadline ends 1 September, so if the Canadian application is filed that day, the priority date is 1 March 2024. If it is filed on 2 September, priority is lost and the Canadian filing date is 2 September. If a Canadian competitor used “LUMEN” before 1 March, the US applicant may not be entitled; if the competitor used it between 1 March and 2 September, priority may defeat the competitor’s claim.
Cross-border practice
Instruct foreign counsel with clear instructions on mark, goods/services, priority and use. Check local formalities, powers of attorney and deadlines. Do not assume that a home-country use or registration satisfies Canadian use. For Canadian clients filing abroad, confirm the priority deadline and the basis for the foreign application.
Traps
Missing the six-month priority deadline; claiming priority for different goods or services; assuming Madrid registration avoids Canadian examination; ignoring Canadian use requirements; and missing a provisional refusal deadline.