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Madrid Protocol Filings in Canada: Take Steps to Avoid Non-Use Cancellation

Fasken
Reading Time 2 minute read
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Trademarks Bulletin

Madrid trademark filings are proving to be popular means to secure protection in Canada. Since June 17, 2019 over 6800 filings with the World Intellectual Property Organization (WIPO) have designated Canada. Indeed there are no special limitations that would negatively affect Madrid protocol filings under Canadian law. It is possible to assert rights acquired through prior use in the context of such filings and they are processed in a generally similar manner as national applications.

Foreign firms should be aware however of the ease and simplicity with which non-use cancellation proceedings can be filed in Canada and of the pitfall that exists for Madrid filings in particular. Non-use cancellation proceedings may be easily initiated against a registration online, by any person, regardless of whether they have a legal interest and at a modest cost. It is commonplace in Canada for external firms to be the party initiating such proceedings. It is therefore less daunting to resort to this kind of proceeding. The proceeding is actually issued by the Canadian Intellectual Property Office (CIPO) which sends an innocuous looking two-page letter requesting that evidence of use be presented in order to maintain registered trademark protection.

Since there is no requirement for a Canadian agent to be designated with respect to Madrid applications, this may result in situations where non-use cancellation proceedings may be missed. Indeed, non-use cancellation proceedings will not be notified to the agent in charge of the Madrid filing, they will simply be mailed directly to the foreign applicant itself. If the applicant fails to grasp the importance of the document and takes no action, the registration will ultimately be cancelled without any possibility of remedying the situation. The agent in charge will simply receive notification through WIPO of the loss of rights in Canada.

In order to avoid such difficulties, firms handling Madrid filings in Canada should either make their client aware of the importance of properly handling correspondence from CIPO or they could also consider designating a Canadian trademark agent - even if no objections are made to the registration.

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