Canada’s accession to the Madrid Protocol became effective on June 17, 2019. Since then, it has become a popular means of securing trademark protection in Canada.
The Madrid Protocol offers businesses and innovators the possibility of securing trademark protection in over one hundred (100) countries, by filing a singular international trademark application. Such an application is filed for international registration with the World Intellectual Property Organization (WIPO) with subsequent member country designations.
Trademark applications under the Madrid System are examined according to the laws existing in each of the designated countries. Accordingly, a Madrid application with a Canadian designation will be examined by the Canadian Intellectual Property Office (CIPO) for compliance with Canadian trademark law.
Representation before CIPO is regulated by statute. Subject to very limited exceptions, one must be listed as a registered trademark agent in Canada, and residing in the country, in order to represent a trademark applicant before CIPO.
Correspondence concerning the Canadian designation of an international registration will be subject to this restriction. CIPO will not send correspondence to the foreign agent or representative identified in an international registration, nor will it deposit all relevant correspondence with WIPO. If a Canadian trademark agent has not been appointed, CIPO will communicate directly with the trademark applicant.
Consequently, communication from CIPO which may contain critical deadlines will not come to the attention of a foreign representative unless the trademark applicant conveys the same. This can be very precarious as clients may sometimes misunderstand or ignore correspondence.
CIPO has been issuing “courtesy letters” to foreign representatives advising that correspondence will be sent only to the trademark applicant or the appointed Canadian trademark agent.
To mitigate against risk and the potential loss of rights, we strongly recommend that a Canadian trademark agent be appointed for all international applications with Canadian designations. The objective is to ensure that all correspondence will be received, diarized, and handled appropriately by Canadian counsel. This is particularly important as we have seen an increase in the number of official objections coming out of CIPO.
At Mason PC, we provide registered Canadian trademark agent services for Madrid Protocol filings. Our trademark professionals include lawyers and registered agents who can also provide strategic counsel on the gamut of your Canadian trademark rights. Nothing will ever fall between the cracks! Always be in the know!