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Foreign Filings
Trademark rights are territorial. So a Canadian registration protects a mark only in Canada. Counterpart registrations may be sought in foreign countries. This is desirable whenever it is intended to sell goods bearing the trademark in a foreign country (e.g. the United States) or if it is intended that services be performed in a foreign country in association with the mark, or if it is intended to license a foreign enterprise to use the mark.
Preferably the mark should be searched relative to each foreign country. Searches covering a number of countries can often be done at a reasonable expense; however, in the United States, there is the possibility of conflicting state registrations as well as federal registrations, and also the possibility of interfering common-law rights. A full search in the United States can cost as much as $2,000 or more, but less complete computer searching limited to federal registrations and applications for word trademarks can sometimes be done for less than $1,000. Design trademarks are much more difficult to search effectively for a reasonable expense.
Foreign trademark applications are typically more expensive than Canadian applications. Count on spending at least about $4,000 per country and in some cases, considerably more. There is an advantage in filing counterpart trademark applications in many foreign countries within 6 months of the original Canadian filing - such filings enjoy the benefit of the original Canadian filing date. One may file an application to register a Community trademark to cover all member countries of the European Union; count on spending at least about $7,000 for the preparation and filing of such application.
To prepare a U.S. or other foreign application, we need the information listed above for a Canadian filing, together with particulars of any actual or intended foreign use either directly or via a foreign licensee or distributor.
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