LuAnne Morrow, Counsel and Trademark Agent - Borden Ladner Gervais LLP.
Despite the talk of trade disputes and the apparent political divide between Canada and the United States the two countries continue to be closely connected in many ways, including with respect to consumers and consumer products. Building your brand and product in the United States in many cases means that you have also built a reputation among Canadians due to the frequent travel of Canadians to the United States and the American media presence in Canada. This creates an ideal opportunity for many companies to launch their products and brands in Canada. While there are many similarities between the countries with respect to marketing and selling to consumers and consumer products there are also many differences. The following are some key issues to consider when launching your product in Canada:
1. Register your Trademarks and Copyrights
Trademark registration is jurisdictional in nature so the trademark registration you have secured in the United States or other countries does not mean your trademark is protected in Canada. A trademark agent can conduct clearance searches and advise if the trademark you are considering or already use in the United States is available for use and registration in Canada. A trademark lawyer can also provide strategic advice with respect to choosing an effective trademark for Canadian consumers. The system for registration in Canada is similar to that in the Unites States but can take much longer so it is advisable to consider trademark registration as part of your launch plan well in advance to selling products in Canada.
If your product has a unique package design or design elements, or is computer software or other work protectable by copyright, registering the copyright in Canada is an inexpensive means for further protecting your product and brand.
Registered trademarks and copyrighted works can be recorded with Canada Customs to reduce infringement, piracy and counterfeit products. Registered trademarks also offer benefits in Quebec where a registered mark is not required to appear in French on packaging.
2. Secure <. Ca > Domains
Although not required many companies choose to use Canadian country code domain names for e-commerce websites aimed at Canadians. It can also be a helpful tool to manage e-commerce directed at different countries. Canadian presence is required to secure such domain registrations and there are options for how to manage such registrations if your company does not have a Canadian store or office.
3. Decide if you will Market and Sell to Consumers in Quebec
The province of Quebec has requirements with respect to the use of the French language when marketing and selling to consumers in Quebec. Making a decision early in your planning process as to whether you plan to sell products in Quebec will inform many other steps you take along the way, such as building your website, terms and conditions for e-commerce, packaging, signage on store fronts, contests and trademarks.
4. Prepare Labels and Packaging to Meet Canadian Requirements
Canadian labelling and packaging requirements are different in several respects from those in the United States. The most significant difference is the requirement for bilingual labelling throughout Canada. In addition the system of measurement is different and will require changes to packages to reflect the metric system. There are also numerous specific requirements for particular classes of products. For example: food products may require inspections or certification both provincially and federally. Use of certifications for organic products must comply with Canadian requirements and nutritional labelling is dramatically different in Canada than the United States. Cosmetics must follow strict guidelines for ingredient lists and alcoholic beverages and cannabis products must meet both federal and provincial requirements and in each province those may differ. All labels must include bilingual ingredient lists and in some cases instructions must also be in both languages and comply with legislation respecting product claims. Companies often engage consults to assist in preparing new packaging and labels, however the consultant should also liaise with legal counsel to ensure the packaging and labelling legal requirements are met.
5. Review Advertisements for Compliance
The principles of ensuring that advertisements are not misleading to consumers are similar in Canada and the United States as are the guidelines for endorsements by influencers or celebrities. However, there are some unique issues in Canada including restrictions in Quebec with respect to advertising to children and restrictions on advertising certain other products such as pharmaceuticals, cannabis, tobacco and alcohol. A campaign that is compliant in the United States may not necessarily be so in Canada. Your advertising agency and legal counsel should work together to review marketing and advertising materials for compliance.
6. Prepare your Website for Canadian Consumers
There are three key issues to consider when making your website and e-commerce sales directed to Canadians: terms and conditions that comply with Canadian consumer protection legislation, a Canadian specific privacy policy, and if you intend to market to consumers in Quebec portions of your website content may need to be in French. Consumer protection legislation exists in all of the provinces in Canada and can impact many elements related to e-commerce and use of websites such as return policies, limitation of liability, and transparency as to changes to the terms and conditions. You may want to consider gating the site to filter Canadian consumers to a separate website or simply integrating Canadian requirements into your content and current terms and conditions.
7. Consider Electronic Promotional Campaigns
Canada’s Anti-Spam legislation (CASL) is far more comprehensive and onerous for companies than the current laws in the United States with respect to spam. Even if your company doesn’t have an office or location in Canada the law still applies to electronic promotions sent to Canadians. These requirements include opt in consent, the ability to unsubscribe from receiving messages and the need to remove names from lists within 10 days of receiving the request, as well as requirements for content and privacy considerations. The fines for failing to comply with CASL are significant and can be in the million dollar range, however compliance is not complex and can be integrated into your current electronic campaigns.
8. Have Contest Rules Reviewed for Compliance
As part of your launch you may want to consider contests, promotions or giveaways. Contests, giveaways and sweepstakes are required to follow specific requirements set out in the Canadian Criminal Code and Competition Act. In Quebec there are additional requirements with respect to contests open to residents of Quebec that including registering with the government authority and posting a bond. If you want to include Canadians in contests that you are running the rules for the contest must meet the Canadian criteria and be communicated in a specific way. Promotional coupons, gift cards and loyalty cards are all subject to provincial consumer legislation and should be reviewed for compliance.
9. Consider Translating Materials into French and other Languages
In Quebec the translation of some materials into French may be mandatory and bilingual labelling requirements are Canada wide. However, from a marketing perspective you may also consider translating promotional materials to French to reach a wider audience in other provinces such as Ontario, and New Brunswick where French is widely spoken or to other languages to market to the very diverse Canadian population.
10. Review your Privacy Practices for Compliance
If your product will be sold through an e-commerce platform, or you will be collecting personal information through your website (including by the use of cookies and other tracking tools), or by other means your privacy policies and procedures must comply with Canadian law. You may wish to consider a policy just for Canadian consumers or integrating Canadian requirements into existing policies.
While the various differences and requirements may appear overwhelming legal counsel with expertise in consumer issues, packaging and labelling and advertising laws in Canada can guide you and work closely with other consultants and your distributor or retail partners to ensure a smooth and successful product launch in Canada.
LuAnne Morrow is Counsel and trademark agent at Borden Ladner Gervais LLP. Her practice focuses on trademark prosecution, strategy and licensing, advertising and consumer issues and she specializes in assisting companies to launch brands, products and companies in Canada. LuAnne is recognized in the 2019 (and since 2010) edition of Best Lawyers in Canada (Advertising and Marketing Law and Intellectual Property Law), the 2018 edition of Managing Intellectual Property's IP Stars (Intellectual Property) and in the 2018 edition (and since 2010) of World Trademark Review's WTR 1000 - The World's Leading Trademark Professionals (Prosecution and Strategy).