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Free Trade Agreements: Their Potential Impact on Your Trademark Protection Strategy Abroad

Published: 07 September 2023

At a time when many Canadian companies are looking to relocate their factories or find new suppliers, which are often based in China, India is emerging as a destination of choice. India, the world's most populous country, is expanding rapidly, particularly in the construction, agriculture, and technology sectors.

The Indian’s government has also recently introduced measures to encourage foreign investments, notably by relaxing certain rules for companies. The Canadian government is currently in talks with its counterparty to conclude a free trade agreement in the next few years. India, along with Vietnam and Indonesia, is one of the countries targeted by Canada's trade strategy to diversify its investments in Asia and reduce its dependence on China.

Several Canadian companies already operate factories in India and other countries and some also send manpower abroad to perform services. Regardless of where you choose to manufacture or supply your products or perform services, it is essential to plan an appropriate strategy for protecting your intellectual property in that jurisdiction, bearing in mind that each jurisdiction has its own legal peculiarities.

Thus, when it comes to protecting trademarks, it is strongly recommended that the mark be protected defensively in the country where the goods are manufactured, even if they are not sold there. In the case of services, protection of the trademark abroad for such services is essential to prevent it from being exploited in that country by a third party. Therefore, a pending application on the register will likely block any subsequent application by a third party. It may significantly deter potential infringers while making it easier to intervene with the competent trademark and customs authorities, if need be.

While obtaining a trademark registration in China can be a long and arduous adventure, given the heavy traffic on its trademark register, this is not yet true for the Indian, Vietnamese, and Indonesian registers. If free trade negotiations or agreements with these countries are of interest to your company, protecting your trademarks in these countries must be considered as a first step.

In addition to protecting trademarks, it will also be essential to put in place a protocol to protect intellectual property within the factory where your products will be manufactured, particularly to protect trade secrets and certain technologies. Introducing defined rules will enable the transmission of sensitive information to be better controlled and monitored. For example, sensitive information should only be accessible to certain key people. It is also important that the team on site fully complies with these rules and is adequately trained to do so.

It is important to keep in mind that when your trademarks are registered abroad, they must be monitored worldwide. This is something BCF can help you with, as our team offers a monitoring service to keep you informed of any application for registration of an identical or similar mark at the international level. Our intellectual property team will be delighted to help you develop a strategy for protecting your intellectual property in Asia and elsewhere in the world.

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As the partner in charge of BCF’s Trademark group, Johanne Auger supports businesses of all sizes in developing and supervising national and international trademark portfolios. Her global vision of issues, her excellent listening skills and her personalized approach help her develop protection strategies tailored to the realities and needs of each client, whether in Quebec, Canada or worldwide. With more than 25 years of experience in trademark protection, intellectual property management and litigation, Johanne advises start-ups, SMEs and large companies operating in the technology, agri-food, pharmaceutical, tourism, cultural, finance, manufacturing, textiles and retail industries. She also leads BCF's Internet group, which offers businesses strategic legal advice regarding their online presence. An excellent communicator eager to share her knowledge, Johanne regularly gives trademark lectures to various organizations in Europe, Asia and North and South America. She provides customized training to senior management and marketing teams from several companies. She has also been the Director of the intellectual property courses offered by McGill University and the Intellectual Property Institute of Canada and has served on the Institute’s board of directors. Concerned with better representation of women in the workplace, she co-directs BCF’s Parity and Inclusion Committee. Johanne Auger will be attending the UNIFAB conference in Paris, FR, March 21st to March 22nd, 2024.  Johanne Auger will be attending the International Trademark Association Annual Meeting in Atlanta, GA, May 18th to May 22nd, 2024. 

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