What happens to your Madrid Protocol trademark application if your home country trademark application is rejected?
Let’s backtrack a bit.
The international procedure under the Madrid Protocol (the Protocol) begins with a home application or registration, referred to as the basic application or the basic registration.
The International trademark applicant will need to have already registered, or filed a national application in the home intellectual property office, referred to under the Protocol as the Office of Origin. The Office of Origin is the trademark office in the contracting state where the applicant is a national, domiciled or has a real and effective industrial or commercial establishment.
Once the international applicant has a basic application or basic registration in place, an Application for International Registration can then be submitted through the Office of Origin for certification and onward transmission to the World Intellectual Property Office (WIPO).
WIPO will then conduct a formal examination of the Application for International Registration and if approved will register the mark in the International Register and publish it in the WIPO Gazette of International Marks. The Applicant would have now acquired an International Registration.
The Intellectual Property Offices in the countries designated for protection will be notified of the International Registration, and they will assess whether the trademark is entitled to protection under local legislation. These are now Protocol Applications.
You will recall that the entire process starts with the basic application or basic registration.
Basic application/basic registration
Application for International Registration
Protocol Applications in territories where protection is sought
What happens if the Office of Origin rejects the basic application? Afterall, the basic application is a national trademark application which can be rejected on several grounds including grounds of inherent registrability. Similarly, what happens if the basic registration is cancelled or otherwise invalidated?
For a certain period of time, the validity and maintenance of the basic application or basic registration is critical to success of the international registration process.
In as much as the International Registration may appear to be independent, it really is not absolutely. For a period of five (5) years from the date of the International Registration, its validity depends on the continued validity of the basic application or basic registration.
If during the dependency period, the basic application is the subject of a final decision or rejection or is withdrawn, the International Registration and the Protocol Applications cannot be sustained. They will fail.
Similarly, if the basic registration is canceled, renounced, revoked, invalidated, or has lapsed within the dependency period, the International Registration and the Protocol Applications will follow suit.
It should be noted that if these events take place as a result of an action commenced during the dependency period, the result as it pertains to the International Registration and the Protocol Application will be the same.
To soften the blow of the five-year dependency feature, the Protocol allows the holder of an International Registration, which is canceled as a result of the ceasing of effect of the basic application or the basic registration, to essentially convert the Protocol Application or registration into a national application or registration before the Intellectual Property Office in the applicable country. This process is called “transformation”.
The transformation application must be filed within three (3) months of the date of cancellation of the International Registration.
The resulting national application will be treated as if it had been filed on the date of the original International Registration and will benefit from all the steps that were taken in relation to the Protocol Application.
Transformation applications are filed in Canada at the Canadian Intellectual Property Office (CIPO). At present CIPO has informed that the mode of filing is through a request via facsimile transmission. It is not clear whether other modes of electronic submission will be accepted, such as through CIPO’s very own online trademark filing portal. There are no government fees for filing transformation application in Canada at this time, however, it is possible that dependent on the stage of the application, the usual government fees associated with the domestic trademark filing system may apply.
We would be happy to assist with your transformation application.