After over five years of preparation, Canada deposited an instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (“WIPO”) on March 17, 2019.
Effective June 17, 2019 Canada will finally become a member of the Madrid System.
According to the WIPO, the Madrid System is described as:
a convenient and cost-effective solution for registering and managing trademarks worldwide;
a way to file a single application and pay one set of fees to apply for protection in up to 120 countries; and
an opportunity to modify, renew, or expand your global trademark portfolio through one centralized system.
The Madrid System is only available to applicants from member countries.
What does this mean?
For Canadians and Canadian businesses, there are several important aspects to consider:
To be entitled to register, Canadian entities must first have filed a basic application or obtained a basic registration. The basic application or registration could be a Canadian Trademark Application or Registration or an application or registration in a Madrid country where the applicant has a real and effective industrial or commercial establishment. Determining whether to rely on a Canadian application or foreign application as the basic application may be a consideration to determine the breadth of the goods and services allowed in the international application. While Canada requires specific goods and/or services to be identified other jurisdictions allow much broader designations.
Merely having a wholly owned subsidiary in a member country does not mean that the non-resident parent company has a ‘bona fide and effective industrial or commercial establishment’ in that foreign forum. Normally, to have a real and effective industrial or commercial establishment would require the ownership or operation to have an office, factory, store, distribution center, or other physical establishment in that country – the presence of a licensee or a related company in the country will not suffice.
Before filing an international application, searches should be conducted to find out if identical or similar marks already exist in the target markets to be covered by the international application. You need to be assured you can use the mark in the target markets without infringing other rights.
The costs of an international application include a basic fee, a complementary fee for each designated country, a supplementary fee for each class of goods/services in excess of three unless all designated countries charge an individual fee, and an individual fee charged by some contracting countries. Some countries charge a very high individual fee making them potentially less desirable to include in order to keep costs under control. Generally, if filing in only 3-5 countries, filing applications individually in each country may be less expensive than filing a Madrid application.
It is important to determine a reasonable and realistic statement of goods or services to avoid vulnerability to non-use cancellation proceedings.
It is important to monitor the international application to ensure the Canadian Trademarks Office (“CIPO”) transmits the international application to WIPO within two months of filing the application with CIPO and other potential deadlines are complied with.
Canadians should protect their marks in Canada now to prevent foreign entities from obtaining registration in Canada for the same marks through the Madrid System.
It is important to consider possible negative meanings of an English mark or a transliterated mark in the local language.
While there are advantages, there are also disadvantages including:
a. the international registration can be more expensive “in the long run” when the mark is finally examined at the national level;
b. one “renewal” application does not eliminate maintenance requirements in other member states;
c. the international registration is subject to “central attack” for five years (ie. dependency) – if the basic application/registration falls, so does the entire international registration;
d. the description of the goods/services cannot be broader in scope than in the basic application/registration – any narrowing amendments made in the basic application after filing must also be made in the international registration; and
e. Latin and South American countries are not yet members of the Madrid Protocol.
What does this mean?
For International and Foreign Trademark owners
For non-Canadian entities there are a few things to consider:
Canada’s accession instrument contained:
a. an extension to 18 months for the Canadian Trademarks Office (“CIPO”) to examine and issue a first official action and notify the International Bureau of provisional refusal;
b. a declaration permitting CIPO to send, after an 18-month time period, a provisional refusal to the International Bureau based on an opposition filed in Canada;
c. a declaration that Canada is to receive an individual fee per class when Canada is designated in the International Application (amount yet to be specified); and
d. a declaration that recordal of licenses in the International Register have no effect in Canada.
CIPO requires goods and services to be defined in ordinary commercial terms and a statement of goods and services that is acceptable in Canada may be narrower than what is acceptable in other jurisdictions.
The time period to oppose an international application is two (2) months from advertisement and the opposition must be submitted on-line.
If a Canadian registration and an international registration designating Canada exist for all the same goods/services and are owned by the same entity, the international registration is deemed to replace the Canadian registration. Notwithstanding replacement, the two separate registrations would exist with different renewal dates.
Canadian trademark owners should discuss pitfalls as well as the advantages and costs of protecting their rights in Canada as well as using the Madrid Protocol system for new applications in multiple jurisdictions if more than three or four countries are involved. For law firms and trademark agents in Madrid jurisdictions who select Canada as a jurisdiction under an international application, Carson IP would be pleased to assist you and your clients with the Canadian examination and opposition processes.
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