TRADE-MARKS REVISED: FILING INT’L APPLICATIONS THROUGH CANADA

As noted in our previous article, Canada’s trade-mark laws are expected to undergo extensive and significant amendments over the next 12 – 24 months. The first step was completed on June 19, 2014 when the Canadian Parliament passed legislation that will allow Canada to implement three international treaties, namely: the Nice Agreement, the Singapore Treaty and the Madrid Protocol.  Full implementation of the new legislation is presently suspended while consultations are conducted respecting the development of new regulations and fee structures.

Our last article reviewed the procedural changes that will come with implementation of the Nice Agreement and the Singapore Treaty. This article will review the international registration system to be introduced with implementation of the Madrid Protocol – likely in 2015 or later.

Madrid Protocol – Filing International Applications through Canada

At present, Canadian businesses who want to register their trade-marks in other countries must file an application directly in those jurisdictions, usually by engaging a local trade-mark agent to do so on their behalf. Similarly, foreign businesses who want to register their trade-marks in Canada must arrange to file an application directly in Canada, usually by engaging a Canadian trade-mark agent to do so on their behalf.

With the implementation of the Madrid Protocol, Canadian businesses will be able to file applications through the Canadian trade-mark office to register their trade-marks in any of the other member countries. Similarly, foreign businesses will be able to file applications to register their trademarks in Canada through their local trade-mark office. Currently, the Madrid Protocol has 92 member countries including the United States and the European Union.

The centralized system provided by the Madrid Protocol makes it possible to file all national applications in one language and to simultaneously renew and record assignments or address changes for registrations in multiple jurisdictions. To avoid delay, member countries are required to comply with certain time limits for processing national applications filed through the Madrid Protocol. If there are any objections to the application in a foreign jurisdiction, applicants will likely need to engage a local trade-mark agent to respond. But applications which encounter no objections may mature to registration in multiple jurisdictions without the assistance of any local agents. Consequently, filing foreign applications through the Madrid Protocol will likely save businesses both time and money over the long term.

The primary disadvantage of the Madrid Protocol is that a successful central attack on the validity of the originating trade-mark application may result in the simultaneous expungement of the corresponding national registrations in all the other member countries. It may therefore be unwise to file foreign applications to register a trade-mark through the Madrid Protocol where there is reason to believe it may be contested.

More details on these changes, including information about the consultation process, are available through this link to the Canadian Intellectual Property Office.