The Madrid System is a solution for registering and managing trademarks on a worldwide basis. A single international trademark application can be filed to apply for protection in up to 130 countries. The resulting global trademark portfolio can be modified, renewed, or expanded through one centralized system.
On January 27, 2014, Canada formally announced its intention to ratify and implement the Protocol Relating to the Madrid Agreement Concerning theInternational Registration of Marks. The amended regulations implement the Protocol and were effective June 17, 2019. There are two basic types of application under the Protocol. Applications filed in Canada by Canadians seeking protection in designated countries outside Canada and applications filed by trademark owners in other countries, which are members of the Protocol, seeking to extend protection of an international registration to Canada.
An application for registration filed under the protocol does not provide international protection but facilitates the registration process in other jurisdictions who are parties to the treaty. The trademark laws of the designated countries apply to the prosecution of the application in that country.
The regulations distinguish between a "basic application" filed in Canada and a "basic registration" obtained in Canada, on the one hand, and a "Protocol application" received from the International Bureau of WIPO to extend protection of an international registration to Canada.
After the implementation of the Protocol a significant percentage of applications filed on behalf of non-residents were filed using the Madrid System. Between April 2021 and March 2022, CIPO received 24,713 international trademark applications filed through the Madrid System. As an office of origin, CIPO certified 1,109 trademark applications for international registration.
Applications for an International Registration (Canadian Office as Office of Origin)
These applications originate in Canada and are filed with the Registrar, which sends them to the International Bureau. The Canadian Office is called the "office of origin".
The section 98 of the regulations provides that a person may file with the Registrar an application for international registration of a trademark for presentation to the International Bureau if they meet these conditions:
(a) the person is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada; and
(b) the person is the applicant regarding a basic application for the trademark or, if there is a basic registration regarding the trademark, the registered owner of the trademark.
Upon receipt of an application for international registration, the Registrar will certify that the information in the application (e.g. the mark itself, goods and services) correspond to the basic application or registration, and then presents it to the International Bureau. Any change in the protection in the basic application or registration (e.g., if the application is withdrawn, or if the registration is cancelled) that occurs within five years of international registration will be reported to the International Bureau by the Registrar including changes that occurred after the five-year period that resulted from a proceeding such as an opposition that began within that period.
Section 101 provides for recording changes of ownership in international registrations when the transferee is a national of or is domiciled in Canada or has a real and effective industrial or commercial establishment in Canada.
Next month we will discuss International Registrations designating Canada.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
