Trademarks and geography intersect in many ways in Canadian trademark law. Let’s look at my top 10 list of how geography is a relevant issue to be considered in the development and protection of brands in Canada.

At the most fundamental level, it is critical to remember that trademarks are territorial in nature, and that a trademark registration in Canada will not protect against infringements of the mark outside of Canada, and vice versa, so that if a United States entity has registered its trademark in the U.S. but not in Canada, they need to register their brands in Canada if they want to ensure that they are not appropriated in either country.
Geography also plays a very important role in the ability of applicants from outside of Canada to obtain trademark protection in Canada. Where a trademark has been used in another country and an application has been filed in another country, that trademark owner can obtain a Canadian trademark registration based on that use and registration. This gives them an advantage over Canadian trademark owners, who need to have use of the trademark in Canada before they can obtain a trademark registration here.
One of the key benefits of obtaining a trademark registration is tied to geography; Section 19 of the Trademarks Act provides that such a registration is entitled to the exclusive use of the trademark across Canada. This is the case even if there has been use of the trademark only in a limited geographical area within Canada.
Geography also plays a role in determining whether a trademark can be considered to be eligible for registration under the Trademarks Act. Trademarks which are considered to be clearly descriptive or deceptively misdescriptive of the geographical place of origin of the goods or services are not capable of being registered as trademarks, according to Section 12(1)(b) of the Act. However, this does not mean that all geographical terms are out of bounds. A geographical place name must have a known reputation as the source of the goods or services in question before the prohibition will come into play.
To be contrasted with the geographical protection afforded by a trademark registration is the position of a party claiming common law rights, which are restricted to the geographical territory in which a reputation has been established by the trademark owner, which, depending on the nature of the business, could be restricted to a city, a province or to a geographical region within Canada.
Where a trademark is held not to be registrable on the basis of Section 12 of the Trademarks Act, for example on the basis that the trademark is clearly descriptive of the character or quality of the goods, or that the mark is primarily merely a surname, it is possible to overcome such an objection based on evidence that the trademark has acquired secondary meaning in Canada, under Section 12(2) of the Act. However, any such registration will be restricted to the province or provinces in which such secondary meaning is found to exist.
Geography also plays a role in a number of the prohibited marks set out in Section 9 of the Trademarks Act. Certain uniquely Canadian terms and symbols are explicitly prohibited, including the Royal Canadian Mounted Police, the Royal Arms, Crest or Standard and the arms or crest of any member of the Royal Family or of the Governor-General of Canada.
With respect to wines and spirits, there is a special provision in the Canadian Trademarks Act , which protects “geographical indications” , which are defined as terms which identify the wine or spirit as originating in a particular geographical territory where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin, and provides special protection to such names, such as Champagne.
Geography is also important in considering the growth of Canadian brands. Where the Canadian trademark application was the first application for the registration of the trademark, then applications filed within 6 months from the filing date of the Canadian application will be afforded the Canadian filing date for all applications filed in jurisdictions which are members of the international treaty called the Paris Convention, which includes the United States and Europe. This can give applicants a significant advantage for trademark owners wishing to expand the protection of their brands.
Finally, the province of Newfoundland and Labrador also enjoys special recognition in Canada as a result of its geography. Trademarks which were registered in Newfoundland prior to April 1, 1949 (when Newfoundland joined Canada) have the same force and effect in Newfoundland had Newfoundland not become a part of Canada.