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Registering Your Trademark Abroad: Is the Madrid Protocol the Best Strategy?

Fasken
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Overview

Trademarks Bulletin

The Madrid Protocol is celebrating its second anniversary in Canada! Since it came into effect on June 17, 2019, Canadian businesses have more than one string to their bow to protect their trademarks in Canada and internationally. This is the first article in the series on the Madrid Protocol in Canada; it will focus specifically on international filings made by Canadian companies.

Madrid Protocol Application or “International Application”: What Are We Talking About?

You may have heard of an “international application” or “international registration” of trademarks. Contrary to what the term “international” implies (and which may be misleading!), the international application or registration is not an application or registration that automatically covers every country in the world.

In fact, it is an application filed through the Madrid Protocol that will result in a registration known as an international registration. This registration is the starting point for further applications for registration that will be sent to the jurisdictions designated by the applicant. It is an “international” application or “international” registration because more than one country is covered by this one application or registration.

There are two options for obtaining a “worldwide” registration: (a) apply to register with all relevant intellectual property offices; or (b) file an application with the World Intellectual Property Organization (“WIPO”) under the Madrid Protocol, designating all member States of that Protocol.

Whether you choose option (a) or option (b), your right to register your trademark in each of the jurisdictions will be determined by the local intellectual property office.

How Does a Filing Through the Madrid Protocol Work?

Do you have a Canadian registration or application? If so, you can apply via the Madrid Protocol to protect your mark in other jurisdictions. Briefly, you enter your basic application or registration information online and then designate the countries/jurisdictions where you wish to extend your rights.

You pay the indicated fees (in Swiss francs) and your application will be examined. If found compliant by WIPO, an international registration will be issued. WIPO will then forward the case to the various previously designated jurisdictions.

Individual examination processes are then launched in each of the jurisdictions according to the applicable local rules (confusion, descriptive character, etc.). Following these examinations and the responses thereof, the local office will issue the registration certificate if the mark is found acceptable.

Benefits of the Madrid Protocol

  • Simplicity. Trademark owners file one application, in one place (WIPO), in one language and pay in one currency.
  • Scope. 124 countries are currently covered by the Madrid Protocol.
  • Savings. Representation by a trademark agent is not necessarily required in every designated State at the time of filing. You therefore save on filing fees. The more jurisdictions included, the more advantageous the procedure becomes!
  • Logistics. The Madrid Protocol simplifies international management of the trademark portfolio, as any subsequent changes to the portfolio will require only one action on your part. A change of address, a change of name, even a transfer: one procedure in one place and the changes will be made in all the registers of the designated States!

Disadvantages of the Madrid Protocol

  • Vulnerability… temporarily. The greatest disadvantage of an application filed through the Madrid Protocol is that it is dependent on the basic application or registration, which lasts for five years from the date of registration in the WIPO Register. If the basic (Canadian) application is rejected, or if the basic (Canadian) registration is cancelled within five years of obtaining international registration, there will be an impact on the whole pyramid of applications and registrations obtained through the Madrid Protocol. However, in such a case, it will be possible to convert applications/registrations obtained through the Madrid Protocol into national applications/registrations for a cost – which may be significant.
  • Lack of knowledge. Not using the services of a local agent may result in cost savings at the time of filing the application for registration via the Madrid Protocol, but this means that the applicant does not receive the valuable advice of an agent on the characteristics of the jurisdiction prior to filing the application. Risks that could have been mitigated may not be. If objections or oppositions are made in a jurisdiction, in most cases it will be necessary to use a local agent. This can result in additional costs that offset or exceed the initial savings.
  • Inadequate communication. WIPO is the intermediary between the various local intellectual property offices and the applicant, so there may be delays in correspondence with the owner. In some cases, the registrant may receive communications from the local IP office with a tight deadline, giving him/her little time to find a local agent who can provide advice. Fortunately, this risk is mitigated by our well-established global network, which allows us to respond quickly to such an eventuality, thereby reducing the risk of communication breakdowns.

A Few Practical Remarks, Regardless of the Type of Filing

  • Prior search. We always recommend that you perform an availability search prior to filing any application for registration, whether it is a national filing or one filed via the Madrid Protocol. To have more peace of mind regarding Madrid Protocol registrations, it is crucial to check the availability of the Canadian trademark that will serve as the basis. This enables you to assess the risks of vulnerability to a central attack as mentioned above.
  • Monitoring. As trademark registries become increasingly cluttered and applications continue to grow in number, trademark owners should consider increasing their monitoring of registries to identify potentially confusing third-party marks so that they can act quickly when appropriate.
  • Expedited review. As of May 3, 2021, CIPO accepts requests for expedited review based on limited, pre-established grounds. Due to the long examination time in Canada, it may be advantageous to check if your Canadian base application can qualify for this expedited review.

Stay tuned for upcoming articles in our series on the Madrid Protocol!

If you encounter any difficulties in filing, registering or managing your trademarks in Canada or internationally, please do not hesitate to contact us. Our Fasken team has solid experience in managing national and international trademark portfolios and can provide you with the appropriate assistance.

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