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International Trademark Protection

Trademark protection outside of the U.S. can be important for a number of reasons. You should at least consider filing for trademark protection internationally if your sales, distribution, and/ or manufacturing position is as follows: You conduct business in another country You plan conduct business in another country You manufacture, distribute, and/or advertise in another country A country of future interest is known for counterfeiting or intellectual property infringement Your products come into contact with nationals from another country, e.g., through tourism Owning trademark registrations outside of the U.S. may be the only means of enforcing trademark rights. Unlike the U.S., many countries recognize trademark rights based on the first-to-file, rather than the first-to-use. Additionally, most international countries do not require use of a mark prior to issuing a registration; meaning, you can effectively reserve your brand name for 3-5 years (depending on the country), when a registration could become vulnerable for non-use. Keep in mind, if you file international applications in most other countries within 6 months of the filing date of a U.S. application, your international applications may obtain the filing date of the U.S. application for priority. This is because the U.S. is party to the Paris Convention treaty, which allows applicants to obtain their U.S. filing date as the priority date in many foreign countries that are also parties to the Paris treaty. There are two main ways to apply to register a trademark and obtain international protection: (1) filing an application through the World Intellectual Property Office (WIPO), aka “Madrid system,” based on a prior-filed U.S. application/registration, or (2) filing a “national application” directly through a country’s trademark office. A third...

Guest Blog: Opportunities in Canada: Intellectual Property Protections

By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad. Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.” With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use. The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in...