Registration of trademarks in Canada and Brazil easier in the future

It is essential for companies to protect their trademarks in order to be able to take effective action against imitators and the dilution of their trademarks. Canada and Brazil in particular are important markets in which interest in trademark protection has increased in recent years. Canada is the world's tenth largest economy and the EU its second most important trading partner. Brazil remains a significant market for European companies in South America, despite the stalled development. It is therefore particularly gratifying that Canada and Brazil, have made it easier to file and register trademarks.

Canada

Since the new Trademark Act came into force on June 17, 2019, it is now possible to apply for trademark protection in Canada by designating the country in international registrations. National applications are no longer required. Existing international registrations can be subsequently extended to Canada. This procedure is much easier and less expensive than filing national applications at the Canadian Intellectual Property Office.

In addition, the Nice Classification is now relevant so that goods and services for which trademark protection is sought are classified accordingly as in most other countries.

The omission of trademark use as a registration requirement also represents a significant simplification. Until now, the use of a trademark in Canada had to be proven in order for it to be registered.

Brazil

Brazil also joined the Madrid Protocol in July, which means that trademark protection for Brazil will in future also be available via international registrations. From October 2019, such applications can be submitted to WIPO, the institution handling the international registrations. As with Canada, existing international registrations can be subsequently extended to Brazil. National applications will therefore no longer be required in Brazil from October.

A major change in the application procedure will be the possibility of multi-class applications. Until now, one trademark per class had to be applied for in Brazil. As a result of the change in the trademark law, several classes of goods and services can now be the subject of a single application. This will significantly reduce the costs of trademark applications in Brazil.

Conclusion

Up to now, trademark applications in Canada and Brazil have often not been filed due to the complex procedures and comparatively high costs involved. The simplification of the application procedures and the resulting significant reduction in costs should prompt internationally active trademark owners to review their portfolios for gaps in intellectual property rights in Canada and Brazil and to close them by making use of the new possibilities.