International Trademarks under the Madrid Protocol
The Madrid Protocol offers businesses and innovators the possibility of obtaining trademark protection in more than 100 countries by filing one single international application in one language with the World Intellectual Property Organization (WIPO). One overall payment is made in one currency, the Swiss Franc (CHF), thus simplifying the application process and providing financial savings for those seeking to obtain and maintain protection for their trademarks internationally.
Applications for the registration of a trademark using the Madrid system are examined according to the legislation and laws existing in each of the designated countries.
To distinguish between national trademarks filed and registered in Canada with the Canadian Intellectual Property Office (CIPO) and international trademarks under the Madrid system, it is important to be familiar with the following definitions:
- a “basic application” refers to a national application that has been filed in Canada with CIPO and serves as the basis for an application for international registration;
- a “basic registration” refers to a registration of a trademark that is on the Canadian register and serves as the basis for an application for international registration;
- a “Protocol application” refers to a request filed with the International Bureau of WIPO to extend the protection of an international registration to Canada which will be examined for compliance with the Canadian legislation;
- a “Protocol registration” refers to a trademark that has been registered in Canada as a result of a “Protocol application”;
- an “Office of origin” refers to the Trademarks Office of the contracting party that can receive and certify an application for international registration of a trademark. In Canada, this office is CIPO; and
- a “contracting party” refers to a member to the Madrid Protocol.
Filing an application for international registration from Canada
Filing an application for international registration from Canada
One form, one transaction, one currency, one place
Eligible applicants can request trademark protection in multiple countries via one application form sent to one location and paying once in one currency using Canada as its Office of Origin.
Applications for international registration (also referred to as international applications) that originate in Canada are filed with CIPO who in turn certifies their content and forwards them to WIPO's International Bureau.
It is important to note that applicants cannot file an application for international registration without first having filed a trademark application or obtained a trademark registration in Canada since a basic application or registration is required as a first step (referred to as a basic application or a basic registration).
Certain eligibility requirements must be met to be able to file an application for international registration For example, other than having a basic application or registration, the applicant must be a Canadian citizen, be a resident of Canada or have an industrial or commercial establishment in Canada.
The International Bureau does not conduct any substantive examination of applications for international registrations. It does however ensure that the correct amount of fees is paid and that the goods or services are appropriately grouped according to the classes of the Nice Classification and not described in overly broad terms.
How to file
To file for an application for international registration using CIPO as the Office of Origin, the Madrid e-Filing system must be used. This system is accessible on CIPO's website in English or in French and provides an easy step-by step process which automatically calculate fees, including the WIPO filing fee and the fee for each contracting party that has been designated.
CIPO does not require a fee for the certification of an application for international registration; however the applicant must pay fees to the International Bureau for the filing of the international application and for each contracting party that has been designated. All fees are payable to WIPO in Swiss Francs (CHF) within the Madrid eFiling system.
To estimate the applicable fees before the application for international registration is filed, you may either:
- login to Madrid eFiling and complete the international application without filing it with CIPO for certification and see the fee calculation section for complete details on how the fees have been calculated, or
- use WIPO's online fee calculator to determine the amount that will be due for your potential application.
It's important to keep in mind that in both cases, the fees will be calculated and displayed in Swiss Francs (CHF) and the exact amount due if paid with a credit card in Canadian dollars will depend on the conversion rate used on the day the application is filed.
For more information on fees and the Madrid system you may wish to consult the following webpage:
Functions of the Registrar as an Office of Origin
Once an application for international registration is filed with CIPO within the Madrid eFiling system, a payment confirmation and a notification of submission will be sent to the applicant's (or representative's) email address that was provided. The application will be reviewed by the CIPO examiner in order to certify that the particulars appearing in the application for international registration correspond to the particulars appearing in the basic application or basic registration, as applicable.
If the application can be certified, CIPO will forward it to the International Bureau within the Madrid eFiling system.
If clarification or more information is required, the CIPO examiner will notify the applicant (or representative) by way of a pre-certification irregularity through the Madrid eFiling platform.
Once the international application is certified, it will be forwarded to WIPO for further processing and the applicant (or representative) will receive an email informing them of the certification by CIPO.
Additional information on how to file an application for international registration using Madrid eFiling, including a practical step by step guide, is available on the CIPO website.
International registration date
The International Bureau of WIPO will recognize the international registration date as being retroactive to the date on which the Registrar receives the application for international registration if it is certified by the CIPO examiner and forwarded to the International Bureau within two months from having received it.
If, however, the certified application for international registration is not received by the International Bureau within the two month period, the international registration date is the date on which the certified application is received by the International Bureau.
Certificate of international registration
If the international application meets all the applicable requirements, the International Bureau will register the trademark in the International Register.
The International Bureau will also notify the Offices of the designated Contracting Parties of the international registration, inform the Office of origin and send a certificate of international registration to the applicant (or representative).
This does not mean however that the trademark is automatically registered in all of the countries that have been designated. As mentioned previously, each Contracting Party will examine the trademark according to their respective legislation.
Five-year dependency period
As the Office of Origin, CIPO is responsible for notifying the International Bureau of any change in the scope of protection in the basic application or registration, such as the deletion of goods or services from the basic application or basic registration (or if it becomes inactive), within five (5) years of the date of the international registration.
The same obligation will apply if a proceeding, such as an opposition, that began before the end of that five-year period results in a change of scope of the protection in Canada after that period.
Transfer of ownership
In ordinary circumstances, when ownership of an international registration is transferred, the request to record the transfer is presented directly to the International Bureau using the required form.
However, in cases where the new owner is unable to obtain the signature of the previous owner of the international registration, the transfer of ownership of the international registration may be filed with the Registrar for presentation to the International Bureau but only if the transferee is a Canadian national, is domiciled in Canada or has an industrial or commercial establishment in Canada. This request must be accompanied by evidence of the transfer and a statement that the efforts to obtain the signature of the previous owner were unsuccessful.
Adding more Countries
To add more countries to an existing international registration, the owner will need to file a subsequent designation with WIPO and pay the applicable fee. CIPO does not accept or certify these requests.
Filing into Canada
Filing into Canada
Extending protection of the international registration to Canada as a designated Contracting Party
It is possible to designate Canada when filing an application for international registration filed form outside Canada. This is referred to as a “Protocol application”.
There are two types of designation, namely the initial designation under article 3ter (1) of the Protocol or the subsequent designation under article 3ter (2) of the Protocol.
The initial designation is part of the very first application for international registration that includes Canada as a designated contracting party whereas in the case of a subsequent designation, the trademark is already subject of an international registration and the holder decides, at a later time, to add the designation of Canada for that particular international registration.
When an application for international registration includes a request to extend protection of the trademark to Canada, the International Bureau will forward the request to the Registrar of Trademarks (CIPO).
Once CIPO receives the request to extend protection of the trademark to Canada from the International Bureau, the request becomes a Protocol application.
The Protocol application will generally follow the same procedure as a national application. If it is found to comply with all Canadian requirements, the trademark will be advertised in the Trademarks Journal for the purposes of opposition.
Individual fees under the Madrid System
In accordance with Article 8(7)(a) of the Madrid Protocol, the following fees will be required for Canada:
- 251 Swiss francs for one class of goods or services and 76 Swiss francs for each additional class, when designating Canada in an international application or subsequently
- 304 Swiss francs for one class of goods or services and 95 Swiss francs for each additional class, when renewing an international registration in which Canada has been designated
As is the case with national trademark applications or registrations, all correspondence on the Protocol application or registration can be in either English or French. When CIPO receives a designation notification where the language of the request is identified as Spanish, an offer for future communication in English or French will be included in the acknowledgement notice in compliance with Canada's Official Languages Act.
The filing date of a Protocol application is the date of the international registration or the date of subsequent designation, as applicable.
If a WIPO representative was identified in the designation notification but does not appear on the Canadian list of trademark agents having a Canadian address, the Registrar will, when CIPO receives the designation, issue a courtesy letter informing the WIPO representative that further correspondence regarding the Protocol application will be directly with the applicant or an appointed Canadian trademark agent having a Canadian address.
A total provisional refusal will be issued when the trademark is considered not to be registrable in Canada or if certain requirements in the Protocol application are missing. This total provisional refusal includes all of the objections listed in the examiner's first report (a copy of which will be included as an attachment). It will be sent to the International Bureau and a copy will be sent to the applicant or their Canadian trademark agent if one has been appointed.
The Registrar must issue any provisional refusal within eighteen months after being notified of the designation to Canada.
The Registrar will be required to confirm with the International Bureau if the protocol application is refused either because the Registrar has issued a final decision or if the application is abandoned for the reason that the applicant fails to respond for example.
A response to the total provisional refusal must be sent to CIPO directly as is the practice for national applications. The CIPO examiner will review the response and approve or refuse the Protocol application.
Division of a Protocol application and Merger of Protocol registrations
An applicant may send to CIPO a request to divide any of the goods or services that are within the scope of a Protocol application. CIPO must forward this request to the International Bureau and, once notified by the International Bureau of the creation of a divisional international registration, the Registrar will record the division of the Protocol application which will benefit from any steps taken in relation to the original Protocol application.
The owner of divisional international registrations may send to the Registrar a request to merge divisional international registrations back to the international registration they were divided from if they stem from the same original Protocol application, relate to the same trademark and have the same owner. The Registrar must forward this request to the International Bureau and, once notified by the International Bureau of the merger of the divisional international registrations, amend the register accordingly.
If a Protocol application has met all of the requirements for protection under the Canadian legislation (including overcoming any provisional refusal) and where an opposition has not been filed, or has been decided in favor of the applicant, CIPO will issue a certificate of registration and send a statement of grant of protection to the International Bureau. Once it is registered, a Protocol registration will be valid for ten years from the date of the international registration and remain on the Canadian trademarks register until it is cancelled or expunged.
Renewal of the International Registration
Once the trademark is registered in Canada, the Protocol registration is valid for ten years from the date of international registration and must be renewed every ten years directly with WIPO using the prescribed form and upon payment of the required renewal fees.
The Registrar will record on the Canadian trademarks database or register the renewal of an international registration for a protocol application or registration received from the International Bureau.
If the international registration is not renewed, the International Bureau will send a notification to that effect to CIPO which may affect a Protocol application or registration. If the international registration is not renewed, the Protocol application will be deemed to have been withdrawn or the Protocol registration will be deemed to have been expunged at the expiry of the international registration in respect of Canada.
The international registration may be renewed either six months before the 10-year term of protection expires or within the six-month grace period following its expiry. Note that a surcharge is applicable if you renew during the grace period. Additional information is available on the WIPO website.
The simplest way to renew your international registration is to use the e-Renewal service on WIPO's website.
The International Bureau may cancel an international registration in whole or in part at the request of the Office of Origin due to the cancellation of the basic application or registration.
The cancelled goods or services can be included in a transformation application which essentially creates a domestic application (or registration as applicable) with some or all of the cancelled goods or services.
The advantage of a transformation is that the resulting domestic application or registration benefits from all of the steps that were taken in relation to the Protocol application or Protocol registration (same filing date, same documentation, etc.).
The owner must file the request for transformation directly with the Registrar within three months after the cancellation is recorded on the International Register.
The three month period cannot be extended and transformation is not available if the international registration expires for failure to renew or is cancelled or restricted at the request of the owner.
If a transformation is requested for a Protocol registration, the Registrar will register the trademark in the name of the applicant and issue a certificate of registration.
If applicable, the day of registration will be deemed to be the day the Protocol registration was registered and the term of protection will be dependent on the time that was remaining for that Protocol registration. Subsequent renewal periods of ten years will then apply. If an international registration was due to be renewed during the three month transformation period, the owner will be required to pay the renewal fee prior to the transformation being accepted.
If the owner of a Protocol registration already owns an existing Canadian trademark registration for the same trademark in association with some or all of the goods or services listed in the Protocol registration, the Protocol registration automatically benefits from the earlier priority or filing date for the relevant goods or services.
The owner may eventually decide not to renew their Canadian trademark registration and only maintain their Protocol registration; however, it is very important to note that even in the case of replacement, the Canadian trademark registration will not be renewed automatically even though the Protocol registration has been renewed.
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