The debate between which countries are ‘first to file’ and ‘first to use’ is partially a misnomer from the outset in the sense that the rights to all trademarks are dependent on use - ‘use it or lose it’ is a pertinent expression in this context.
Subscribe Now and Receive Your FREE Framework To Evaluate & Future-Proof Your Trademark Process
The debate between which countries are ‘first to file’ and ‘first to use’ is partially a misnomer from the outset in the sense that the rights to all trademarks are dependent on use - ‘use it or lose it’ is a pertinent expression in this context.
In the trademark world, as indeed in life in general, everything is interconnected and small changes in one area can lead to knock on effects in another. The business world is global and for many companies, expanding their customer base across regions is a necessary goal for commercial success. It’s critical to understand the potential implications of changes to the trademark process in key regions for your business around the world.
One of the most frequently asked questions by those newer to the trademark world is “How long will it take to get my trademark registered?” Frustratingly, as with so very many things in the legal world, the real answer is “It depends”. There are genuine reasons why this should be so. Innumerable factors can impact your application to register a trademark and no promises can be made as to the time that your specific application will take. However, there are some indications that you can use to create a general guideline of what you might expect in Canada.
Around the world, each country has developed differently. Even between countries that share common ancestors and language, the differences can be astounding. The business globe is split into ‘key regions’ where closer countries are grouped together - such as North America, EMEA, Europe and Asia. As you move from looking at countries to continents, the gap in natural cultural understanding of those markets tends to grow wider.
I have never conducted an orchestra but I can see that it must be a very skilled and complex matter indeed. It is an excellent analogy for managing a trademark portfolio with a dependence on excellent timing, perfectly synchronised actions and a very quick ear for any discordant notes. Managing a large international portfolio then is as if half of your musicians have dialled in on a conference call from a range of other locations.
As every student of law quickly learns, there is a vast gulf of difference between the theory of law and its application in practice. The Madrid System of filing for international trademark registrations is a prime example. In theory, the Madrid System administered by the World Intellectual Property Office (WIPO) in Geneva offers a simplified and lower cost solution to managing international trademark registrations. There can be little doubt that compared to the previous system which often involved hiring local counsel in every country, many improvements have been achieved with undoubtedly, more to come. However, ‘simplified’ remains a relative term and complications still abound for the unwary!
