Practical Guide — Madrid eFiling
Filing an Application for International Registration in Canada

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Madrid – The International Trademark System

Acceding to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) has introduced the Madrid System in Canada. The International Trademark System makes it possible to file an Application for International Registration (AIR) originating in Canada to request protection in a multitude of countries that are already members of the Madrid System. In addition, an AIR originating in any of the countries already party to the Protocol can include Canada as a Designated Contracting Party where trademark owners wish to request protection of their trademark

More information on the Madrid System in general is available on the WIPO website at https://www.wipo.int/madrid/en/,

Information relating to the Madrid System as it is implemented in Canada can be found on CIPO's website.

Madrid eFiling

Filing an Application for International Registration in Canada

This practical guide is intended for users wishing to file an AIR using CIPO as the Office of Origin. This guide includes screen captures with highlighted areas which are being further described or explained.

Please note that throughout the Madrid eFiling System, if a field is marked with a red asterisk it is considered mandatory and must not be left blank. The user will not be able to proceed within the Madrid eFiling System until all mandatory fields have been completed for a specific section.

How to access the Madrid eFiling System?

How to access the Madrid eFiling System?

An ISED account is required to access the Madrid eFiling System by logging into the Canadian Trademark E-Filing service.

Figure 1 - See the long descriptionFigure 1

Long description for Figure 1

The image shows an overview of the sign in screen for the Canadian Trademark E-Filing service

After logging in, the user must select the “Create an Application for International Registration” from the left-hand menu.

Figure 2 - See the long descriptionFigure 2

Long description for Figure 2

The image shows an overview of the Canadian Trademark E-Filing service with the user selecting “Create an application for International Registration” from the left-hand menu.

The user will then be brought to the Madrid eFiling homepage page. This page is called “My requests” and lists all of the AIRs that were initiated by the user.

Figure 3 - See the long descriptionFigure 3

Long description for Figure 3

The image shows an overview of the Madrid eFiling homepage, which is also called “My requests”.

Account Information

After logging in with an ISED user name, the landing page of the Madrid eFiling System will appear. This is the “My requests” screen. Clicking on “Settings” located in the right hand corner, as shown in Figure 4, will display the user's general account information.

Figure 4 - See the long descriptionFigure 4

Long description for Figure 4

The image shows the highlighted “Settings” button, which is located in the right hand corner of the “My requests” screen.

The “settings” screen displays the user ID, full name, national office (Canada in this case) and email address linked to the account. It is not possible to change the Madrid eFiling user ID as it is automatically generated by WIPO and is assigned to an individual ISED account upon the very first login.

It is possible for a user to “share requests with other people” within the Madrid eFiling system. This would be done by entering the user ID and email address of the person with whom the AIR are to be shared with.

Figure 5 - See the long descriptionFigure 5

Long description for Figure 5

The image shows the highlighted user ID and email address fields on the “Settings” screen, which appear below the “Share requests with other people” subheading.

1. Using the Madrid eFiling System

1. Using the Madrid eFiling System

1.1 Homepage: User's “My requests” list

As mentioned previously, the homepage within the Madrid eFiling system is the user's “My requests” list. This list displays all of the AIR created by the user and their current status. Please note that shared requests with other registered users will also appear on the user's “My requests list”.  

Figure 6 - See the long descriptionFigure 6

Long description for Figure 6

The image shows an overview of the user’s “My requests” list.

On this homepage, the following information related to each specific AIR appears:

Column

Description

Number

The basic application number is displayed here. The basic registration number does not appear on this page.

Office

Office of Origin associated with the user profile.

My reference

Optional field displaying the name/number assigned by the user to each particular AIR. Since the examiner will not see this reference detail, please ensure to always use the application number when corresponding with the office.

Mark text

Displays the trademark text if it is a word trademark or a trademark in standard characters. If the trademark consists of a design trademark without text this field will be blank.

Updated after

Date on which the AIR was last accessed and/or updated

Paid

Displays whether the fee for the AIR has been paid.

Status

Displays the step in the process at which the AIR currently stands.

Description of the “Status” drop-down menu:

The drop-down menu in the status column allows the user to filter the AIR based on the step in the process at which the AIR currently stands. Select the blank status from the drop-down menu to view all applications. 

Figure 7 - See the long descriptionFigure 7

Long description for Figure 7

The image shows the highlighted “Status” column, and the expanded drop-down menu which displays all possible statuses for an AIR.

  1. Incomplete request – An AIR that has been created but is not yet completed or submitted to CIPO for certification. At this stage amendments to the AIR are still permitted.
  2. Submitted to the office - A completed AIR that has been submitted to CIPO for certification. At this stage and unless a correction is required, it is no longer possible to make any amendments to the application for international registration. A pdf/html version of the AIR is available to the user.
  3. Office examination – An AIR that the CIPO examiner is in the process of certifying.
  4. Correction pending – An AIR that CIPO has reviewed and for which issues have been identified and must be addressed by the applicant. These issues are referred to as “pre-certification irregularities”. At this stage access is limited to updating the AIR screens where the pre-certification irregularities have been identified. Once the applicant makes the necessary changes, the AIR must be resubmitted to CIPO and the status will return to “Office examination”.
  5. Rejected by Office – An AIR that has been rejected by CIPO (rejected or refused?)
  6. Archived – An AIR that has been archived
  7. Submitted to WIPO – An AIR that has been certified by the CIPO examiner, and forwarded to WIPO for processing. Access to the pdf/html version of the certified AIR is available to the user.
  8. WIPO Processing – An AIR that is currently being reviewed by WIPO.

1.2 Creating a new AIR

The following steps describe how to create a new AIR:

  1. The user must click on the “New Request” button located at the top left just above the number column.

    Figure 8 - See the long descriptionFigure 8

    Long description for Figure 8

    The image shows the highlighted “New request” button, which is located at the top left just above the number column.

  2. This will bring the user to the “Basic application/Registration” screen, as shown in Figure 9.

    Figure 9 - See the long descriptionFigure 9

    Long description for Figure 9

    The image shows an overview of the “Basic application/registration” screen, and the highlighted section tab which appears in the left-hand menu.

  3. Under the “General” heading, the drop-down menu for the language of the request offers the choice between English and French. To avoid irregularities from CIPO or WIPO, the language selected here must be consistent throughout the AIR including the goods or services, the description, the colour claim, etc. WIPO will not accept an AIR that uses a combination of both languages.

    The language of the request entered here may be different from the language of correspondence with CIPO and WIPO that will be selected later under the “Languages and correspondence” section.

    Figure 10 - See the long descriptionFigure 10

    Long description for Figure 10

    The image shows the highlighted “Language of the request” field, and the expanded drop-down menu which displays English or French as options.

  4. The user may include reference details for the AIR in the “Your reference” field. This reference if for the user only as it will not be displayed for the CIPO examiner. This reference number will not be useful when discussing the AIR with the CIPO examiner. Always using the application number is required when corresponding with CIPO.

    Figure 11 - See the long descriptionFigure 11

    Long description for Figure 11

    The image shows the highlighted “Your reference” field, which appears below the “General” subheading.

  5. Once the reference details are specified, the user must click on the “Import trademark” button.

    Figure 12 - See the long descriptionFigure 12

    Long description for Figure 12

    The image shows the highlighted “Import trademark” button.

  6. The “Import trademark” pop up screen will be displayed.
  7. The user must enter the basic application number and click “Search”. The registration number search is not available. To find the corresponding application number, a search of the Canadian Trademarks Database is recommended.

    Figure 13 - See the long descriptionFigure 13

    Long description for Figure 13

    The image shows the highlighted “Search” button, which appears on the “Import trademark” pop-up screen.

    When attempting to import a basic application or registration, you may encounter the following error message:

    Mark not found

    This error message may relate to any of the following:

    • Searching by registration number is not supported.
    • Requested basic application/registration not found.  You must provide a valid application number.
    • Error uploading the requested basic application/registration according to specifications (data mapping issue).
    • Goods/services are not all grouped according to the classes of the Nice Classification in the basic application/registration.
    • Basic application/registration is inactive.
    • Requested application number is invalid. (Format is: number(extension))  
    • The basic application or registration is not eligible.
    • According to the type of trademark, the visual representation of the trademark is missing.
    • Missing representation of the trademark for non-word or standard character trademark.
  8. Details retrieved from the basic application or registration will now be displayed. If an error message appears, it may be because the goods or services contained in the basic application or registration have not yet been grouped according to the classes of the Nice Classification. An error message may also appear if the basic application has not yet been downloaded into the Canadian trademarks database; this could be the case if, for example, a new trademark application using the CIPO Trademark e-filing application has only just recently been filed.

    Figure 14 - See the long descriptionFigure 14

    Long description for Figure 14

    The image shows the highlighted “Search” button, which appears on the “Import trademark” pop-up screen.

  9. Review the basic trademark details to ensure that the correct basic application or registration has been selected. Once confirmed, the user must click on the “OK” button. The information from this basic application or registration will be extracted from the database to pre-populate the corresponding fields in the AIR. The user will no longer be permitted to change the basic application or registration after moving on to the next section.
  10. After clicking “OK” the basic application or registration information will appear (figure 15), displaying the application number, registration number and registration date (if available). Note that the trademark is not shown here; it will only be displayed under the “Mark” section.
  11. To import a secondary basic application or registration, the user must click on the “Import another trademark” button and repeat the above steps.

    Need to know: The checkmark icon Checkmark icon beside each section of the AIR indicates that this section is complete. Depending on the status, certain modifications may be permissible.

    Figure 15 - See the long descriptionFigure 15

    Long description for Figure 15

    The image shows the highlighted trademark information such as: the application number; the registration (if available); and registration (if available) or application date, which appears after a trademark has been imported. In addition, the image shows the highlighted “Import another trademark” button.

  12. Once the basic application/registration information has been entered, it is time to identify and select the contracting parties that will be designated for this AIR. These are the countries or organizations where protection of the trademark is requested. The user must click on the “Designated contracting parties” located at the bottom right hand side to proceed.

    Figure 16 - See the long descriptionFigure 16

    Long description for Figure 16

    The image shows the highlighted “Designated contracting parties” button, which users can click to proceed to the next section of their application for international registration.

1.3 Designated Contracting Parties (DCP)

Once on the “Designated contracting parties” screen, a list of all the Contracting Parties will appear in alphabetical order of country or organization code (i.e. Switzerland is under CH, African Intellectual Property Organization is under OA, etc.) Note: information concerning national or regional procedures for each DCP is available on the WIPO website by clicking the link provided at the top of the screen, as shown in figure 17.

Figure 17 - See the long descriptionFigure 17

Long description for Figure 17

The image shows an overview of the “Designated contracting parties” section, and the highlighted Madrid member profile link provided at the top of the screen.

To designate a country or organization where protection is requested, the user must select the box next to the country or organization code. Remarks for some of the DCPs will appear at the bottom of the list. See figure 18 for some examples.

Figure 18 - See the long descriptionFigure 18

Long description for Figure 18

The image shows an overview of the “Remarks related to selected parties” that will appear at the bottom of the “Designated contracting parties” list.

Once the contracting parties have been selected, the user must click on “Applicant(s)” at the bottom right of the screen to proceed. To return to the previous screen click on the “Basic application / registration” also at the bottom right of the screen.

1.4 Applicant(s)

To provide the mandatory information required for the applicant the user must follow these steps:

  1. The system will have retrieved the applicant name and address from the basic application or registration and will display the applicant's name here. In the case where more than one basic application or registration is used, only the applicant name and address from the first basic application or registration will be displayed.

    Figure 19 - See the long descriptionFigure 19

    Long description for Figure 19

    The image shows an overview of the “Applicant(s)” screen, and the highlighted applicant name which is displayed upon entering the screen.

  2. To review and add any mandatory details to the applicant screen, the user must click on the applicant name that appears in the gray bar. A pop-up window will display the applicant details that were imported from the basic application or registration. Note that the full name and address of the applicant cannot be modified at this time.
  3. If a WIPO Representative is not included for the processing of the AIR, a valid email address and telephone number are mandatory in the applicant screen and must be included on this “Add/edit applicant” screen.

    Figure 20 - See the long descriptionFigure 20

    Long description for Figure 20

    The image shows an overview of the “Add/edit applicant” screen.

  4. Indicating the “Applicant type” is also mandatory. The user can select between two options: “Physical person” or “Legal Entity”.

    Physical Person

    Legal Entity

    An individual who is a national of Canada or is domiciled in Canada.

    Please note: A company name cannot be used to refer to a physical person. 

    An association, corporation, partnership, proprietorship, trust, or individual that has legal standing in the eyes of law. The legal entity must be Canadian or must have a real and effective industrial or commercial establishment in Canada.

    Physical Person

    If the user selects the physical person checkbox, the window will expand to open the “Entitlement to File” section where the user must indicate that the applicant is entitled to file either as a national or through domicile as shown in figure 22. If the user selects entitlement through domicile, additional fields will be displayed where the applicant will be required to provide a Canadian street address (Note: a PO Box or c/o is not considered a valid street address, see mandatory fields).

    Figure 21 - See the long descriptionFigure 21

    Long description for Figure 21

    The image shows the “Physical person” checkbox selected as the “Applicant type”.

    Figure 22 - See the long descriptionFigure 22

    Long description for Figure 22

    The image shows the “Entitled through domicile” checkbox selected as the “Entitlement to file”, and the highlighted checkbox options of either “Reusing the contact information provided above” or “Providing another address”.

    Legal Entity

    If the user selects the legal entity checkbox, the window will expand and additional fields will appear, namely “Legal nature of the legal entity”, “Country” and “State of incorporation”.

    Figure 23 - See the long descriptionFigure 23

    Long description for Figure 23

    The image shows the “Legal entity” checkbox selected as the “Applicant type”.

    Field

    Information

    Legal nature of the legal entity

    This information may be required by some designated contracting parties and consists of e.g. Limited liability company, cooperative, corporation etc. For more information on which designated contracting parties require this information please consult the Madrid member profiles.

    Country

    Country where the legal entity was incorporated.

    State of incorporation

    Territorial area within a State under the law of which the legal entity has been organized, for example, a canton, province or state.

    In addition to the above, the “Entitlement to File” section will be displayed and the user must check the box indicating that the applicant has a real and effective industrial or commercial establishment in Canada and indicate the address of this establishment.  If the user selects to provide another address, additional fields will be displayed to provide a Canadian street address (Note: a PO Box or c/o is not considered a valid street address, see mandatory fields).

    Figure 24 - See the long descriptionFigure 24

    Long description for Figure 24

    The image shows the “applicant has a real and effective industrial or commercial establishment in the: Canada” checkbox selected as the “Entitlement to file”. In addition, the image shows the highlighted “Provide another address” checkbox and the additional fields that are displayed once this checkbox has been selected.

  5. Once all mandatory fields have been entered in the “Add/edit applicant” window, the user must click on the “OK” button located in the bottom right-hand corner to return to the “Applicant(s)” screen. 
  6. If the applicant information is satisfactory, the user must click on “Representative” to proceed.

1.5 Representative

The “Representative” screen will retrieve the Canadian trademark agent details provided in the basic application or registration from the Canadian Trademark Database. Once this screen appears, verify the details and edit them if necessary. This section identifies is used to identify the representative appointed to interact with WIPO on the applicant's behalf. Please note that the person or firm entered as a representative on this screen will also be receiving all notifications from the CIPO regarding the AIR, including pre-certification irregularities identified by the examiner during the certification process.

To enter a different name/firm here, the user must amend the fields on this page or select “no” at the top of the page to remove the information on this page if the user does not wish to appoint a representative for the AIR.

Removing the representative information here will not affect the information contained in the basic application or registration. An email address and telephone number must be provided in the applicant fields on the previous page if a representative is not appointed.

Figure 25 - See the long descriptionFigure 25

Long description for Figure 25

The image shows an overview of the “Representative” screen.

Once the representative information is satisfactory, the user must click on “Languages and correspondence” to proceed to the next screen,

1.6 Languages and Correspondence

Although the user has identified the language of the request at the very beginning in the basic application/registration screen, it is also mandatory to select the languages of correspondence from the drop down menus on this page.

Figure 26 - See the long descriptionFigure 26

Long description for Figure 26

The image shows the highlighted drop-down menus from the “Languages and correspondence” section including: “Preferred correspondence language with WIPO”; “Preferred correspondence language with office of origin”; and “Second language for European Union (EUIPO)”.

Correspondence with WIPO may be in English, French or Spanish and can be selected from the drop-down menu.

As Canada is a bilingual country having two official languages, the applicant may select either “English” or “French” from the drop-down menu as the language for correspondence with the Office of origin (CIPO).

If the European Union has been designated, it is mandatory to select a second language of correspondence. English, French, Spanish, Italian, or German are available and can be selected from the drop-down menu.

Need to know: The “Second language for European Union (EUIPO)” field will only appear here if the European Union has been selected as a DCP.

If a representative has been appointed for the AIR, all correspondence, including correspondence from CIPO, will be sent to the representative as shown in figure 27. If a representative has not been appointed, the system will send all email correspondence to the applicant's address that was provided.

Figure 27 - See the long descriptionFigure 27

Long description for Figure 27

The image shows the highlighted statement that correspondence “will be sent to representative address”.

Figure 28 - See the long descriptionFigure 28

Long description for Figure 28

The image shows the highlighted statement that correspondence “will be sent to the first applicant address” and the following auto-captured applicant information fields.

Once the languages and correspondence information is satisfactory, the applicant must click on “Mark” to proceed to the next screen.

1.7 Mark

The trademark in the AIR must be identical to the trademark in the basic application or registration. The trademark provided on this page cannot be modified. If it is not the trademark that you meant to use to file your AIR, the wrong basic application or registration information may have been entered and a new AIR may need to be created

To review the trademark information and provide additional details, follow the steps below:

  1. Identifying the kind and type of trademark.
  2. If the trademark kind is “word”, the trademark will appear in the field under the “Text of the mark” heading. If the trademark is in standard characters in the Basic application/registration, the box appearing below the trademark should be checked.
  3. If the trademark is figurative, the “Image representation of the mark” section will appear as shown in figure 29 and include the visual representation of the trademark.

    Figure 29 - See the long descriptionFigure 29

    Long description for Figure 29

    The image shows an overview of the “Mark” screen.

Trademarks in colour:

  1. If the trademark is in colour the “The mark is in colour” box must be checked as shown in figure 30.

    Figure 30 - See the long descriptionFigure 30

    Long description for Figure 30

    The image shows the “the mark is in colour” checkbox which has been selected by the user.

    Note: The basic fee to process trademarks in colour is different than trademarks that are in black and white. Checking this box ensures that the correct basic fee is included in the final fee calculations to avoid any irregularities. All fees are calculated in Swiss Francs (CHF) and are payable directly to WIPO using this Madrid eFiling system. It is recommended to consult WIPO's Schedule of Fees and their Fee Calculator (all fees are shown in Swiss Francs). 

    In addition, where the trademark is in colour, an image representation of the trademark in colour must be included in the attachments section if the basic application contains a black and white representation of the trademark and a colour claim. For more information on how to upload an attachment refer to section 1.12 of this document.

Colour is claimed as a feature of the trademark:

  1. If the basic application or registration is for a trademark that includes a colour claim, the “The applicant claims colours as a distinctive feature of the mark” box must also be checked and the details of the colours claimed will need to be entered in this section. The “colour claimed” section will only be displayed if the applicant has checked both boxes.

    Figure 31 - See the long descriptionFigure 31

    Long description for Figure 31

    The image shows the “the mark is in colour” and “the applicant claims colours as a distinctive feature of the mark” checkboxes, which have both been selected by the user.

  2. To add the colour claim, the user must type the name of the colour in the box and click on the “Add colour claimed” button. The name of the colour will appear with an empty text field to the right. The user must indicate in this field the principal parts of the trademark that appear in that colour.

    Figure 32 - See the long descriptionFigure 32

    Long description for Figure 32

    The image shows the highlighted “Add a colour claimed” button.

  3. If more than one colour is claimed, the user must repeat step 6 for each of the colours.

    Need to know: If colour is claimed as a feature of the trademark, at least one colour must be entered in the data field.

Transliteration of the trademark:

  1. If the trademark consists in whole or in part of characters other than Latin characters and the basic application or registration includes a transliteration of those characters, in English or in French, it will need to be included in this section.

    Figure 33 - See the long descriptionFigure 33

    Long description for Figure 33

    The image shows the highlighted “Transliteration of the mark” field, which states that “If in the basic application or basic registration a text occurs in non-Latin characters (for example Arabic or Cyrillic writing), you must provide the literal text in Latin characters. It does not concern a translation here, but rather a sequence of characters”.

Translation of the mark:

  1. If the trademark consists in whole or in part of words not in English or French and the basic application or registration includes a translation, in English or in French, of those foreign words, it will need to be included in this section.
  2. The user may also choose to check the box “The words contained in the mark have no meaning (and therefore cannot be translated)” if a translation is not applicable.

    Figure 34 - See the long descriptionFigure 34

    Long description for Figure 34

    The image shows the “the words contained in the mark have no meaning (and therefore cannot be translated)” checkbox, and the following English and French translation fields.

Other mark information:

  1. If applicable, the description of the trademark included in the basic application or registration will appear in the appropriate field as shown in figure 35.

    Figure 35 - See the long descriptionFigure 35

    Long description for Figure 35

    The image shows the highlighted “other mark information” fields including: “Description of the mark”; “Voluntary description of the mark”; “Verbal elements of the mark”; and “the applicant declares that he wishes to disclaim protection of the following element(s) of the mark”.

  2. If the basic application or registration includes a disclaimer, it will also appear in the appropriate field.
  3. Once the trademark details are satisfactory, the applicant must click on “Goods and services” to proceed. 

1.8 Goods and Services

Upon accessing the “Goods and services” section, a pop-up box will appear providing information on editing the goods or services. The user must click on the “OK” button to proceed.

Figure 36 - See the long descriptionFigure 36

Long description for Figure 36

The image shows the pop-up box which appears on the screen upon accessing the “Goods and services” section. The message states that: “By clicking on the class you get the description of the goods and/or services. Click on “Edit” (in the blue beam, to the right of the class), to fill in your own enumeration of the goods and/or services. This text concerning the goods and/or services has to be drawn up in English or French.” In addition, the image shows the highlighted “OK” button.

 List of goods and services:

  1. In the “List of goods and services” section, the system will display all the goods or services retrieved from the basic application or registration, and in the numerical order of the classes of the Nice Classification. The classes appear in gray bars. To view the goods, the user must click on the gray bar of the class to expand it.

    Figure 37 - See the long descriptionFigure 37

    Long description for Figure 37

    The image shows the highlighted classes of the Nice classification, which were retrieved from the basic application or registration. The classes appear in gray bars.

  2. The bar will change from gray to blue and the full list of goods or services within that class will appear below the bar. These good or services will appear in separate groups based on how they appear in the database: if they are separated by a semi-colon they will appear on the next line.
  3. If registration is being sought for all of the goods and services contained in the basic application or registration, the checkbox shown in figure 38 can remain checked. However, if a user intends to make changes to the goods and services listed here they will need to unselect the checkbox as shown in figure 39.

    Figure 38 - See the long descriptionFigure 38

    Long description for Figure 38

    The image shows the “Registration is sought for the SAME goods and services contained in the basic application / registration” checkbox, which has remained selected by the user.

    Figure 39 - See the long descriptionFigure 39

    Long description for Figure 39

    The image shows the “Registration is sought for the SAME goods and services contained in the basic application / registration” checkbox, which has been unselected by the user.

  4. Within the blue bar are several functions giving the user the ability to make certain changes to the goods or services. They can be removed completely, edited or left exactly as they appear in the basic application or registration.

    1. Bilingual display: this opens a window allowing the user to view both the English and French terms within this particular class as shown in figure 40.

      Figure 40 - See the long descriptionFigure 40

      Long description for Figure 40

      The image shows the bilingual display, which allows the user to view both the English and French goods and services terms within a particular class.

    2. Edit: this opens a window allowing the user to make changes to the terms specified within that class (figure 41). Note that the user can also click on the individual term directly within the list to edit or remove it (figure 42).

      Figure 41 - See the long descriptionFigure 41

      Long description for Figure 41

      The image shows the “Edit terms” window, which allows the user to make changes to the terms specified within a specific class. In addition, the image shows the highlighted “OK” button.

      Figure 42 - See the long descriptionFigure 42

      Long description for Figure 42

      The image shows the highlighted “Term actions” window, which allows the user to either to “Edit the term” or “Remove the term from the list”.

    3. Remove selected terms: if a user checks the box next to a specific term, this button allows them to remove it.

      Figure 43 - See the long descriptionFigure 43

      Long description for Figure 43

      The image shows that the user has selected the checkbox next to a specific term, and the highlighted “Remove selected terms” button.

    4. Clear: Whether or not a user has checked the box next to a term within the class, clicking on this will remove all of the terms within that class.

      Figure 44 - See the long descriptionFigure 44

      Long description for Figure 44

      The image shows that the user has clicked the highlighted “Clear” button, and now the statement “This class does not have any term, click edit to add terms” appears below the class number.

    5. The “X” icon  X icon : this button will delete the class and all the terms listed within that class.

      Figure - See the long descriptionFigure 45

      Long description for Figure 45

      The image shows the appearance of the screen after a user has chosen to click the “X” icon, which deletes the class and all the terms listed within that class.

    6. Restoring a class:
      1. if a user has deleted a class by accident, they can restore the entire class by selecting it from the drop-down menu as shown in figure 46,

        Figure 46 - See the long descriptionFigure 46

        Long description for Figure 46

        The image shows the user restoring an entire class by selecting it from the expanded “New class” drop-down menu.

      2. Once a class is selected, the user can click on the “+” icon Plus icon to restore the class as shown in figure 47.

        Figure - See the long descriptionFigure 47

        Long description for Figure 47

        The image shows the highlighted “+” icon, which the user can click to finalize restoring the selected class.

      3. The class is now restored as shown in figure 48.

        Figure 48 - See the long descriptionFigure 48

        Long description for Figure 48

        The image shows an overview of the “Goods and services” screen once the selected class has been restored.

  5. Once a user is satisfied with the goods and services information provided, they can click on the “Limitations” button to proceed.

1.9 limitations 

In the “Limitations” section, the user can choose to limit the list of goods or services for a specific designated contracting party. To request protection for all goods and services in all of the designated contracting parties, the user does not need to create a limitation list within this section.

  1. If a user wishes to add a limitation list for one or more of the designated contracting parties, they must click on the “Add a limitation” button.

    Figure - See the long descriptionFigure 49

    Long description for Figure 49

    The image shows the highlighted “Add a limitation” button.

    Figure 50 - See the long descriptionFigure 50

    Long description for Figure 50

    The image shows an overview of the “Limitations” screen once a user a begun the process of adding a limitation.

  2. To create a new limitation list for one of more of the designated contracting parties, the user must click on the drop-down menu, and select the designated contracting party for which a limitation will apply.

    Figure 51 - See the long descriptionFigure 51

    Long description for Figure 51

    The image shows the highlighted “Designated contracting parties” field, and the expanded drop-down menu which displays the applicable designated contracting parties.

  3. Once the user has selected the applicable designated contracting party, they can click on the “+” icon Plus icon located beside the drop-down menu to create their limitation list.

    Figure 52 - See the long descriptionFigure 52

    Long description for Figure 52

    The image shows the screen once a user has selected the applicable designated contracting party from the drop-down menu and the highlighted “+” icon button.

  4. To add another contracting party, the user must repeat the steps above. The additional designated contracting party will then appear for this limitation.

    Figure 53 - See the long descriptionFigure 53

    Long description for Figure 53

    The image shows the appearance of the limitation list after a user has added two designated contracting parties.

  5. To delete a designated contracting party from the limitation, the user must click on the “x” iconX icon located to the left of the applicable designated contracting party. Once a designated contracting party is properly deleted, it will no longer appear for this limitation.

    Figure 54 - See the long descriptionFigure 54

    Long description for Figure 54

    The image shows the highlighted “x” icons located to the left of each designated contracting party, which allow a user to delete a designated contracting party from the limitation.

  6. Once the appropriate designated contracting parties for this limitation have been selected, the user can add the goods or services that are subject of this limitation. The user must select the appropriate class from the drop-down menu, and click on the “+” icon Plus iconas shown in figure 55.

    Figure 55 - See the long descriptionFigure 55

    Long description for Figure 55

    The image shows the expanded class drop-down menu, which can be used to select the classes that are subject to the limitation. In addition, the image shows the highlighted “+” icon which adds the class to the limitation after it has been selected.

  7. Similarly to the “Goods and Services” section, the classes appear in grey bars. To view the goods or services, the user must click on the grey bar of the class to expand it. The bar will change from grey to blue and the full list of goods or services within that class will appear below the bar. The same editing functions are available in the blue bar. 

    Figure 56 - See the long descriptionFigure 56

    Long description for Figure 56

    The image shows the highlighted editing functions that appear in the blue bar, including: “bilingual display”; “edit”; “remove selected terms”; and “Clear”.

  8. To delete a limitation, the user must click on the “x” icon X icon  located in the blue bar at the top of the limitation as shown in figure 54. A pop-up message will appear asking for confirmation that the user wishes to delete the limitation.

    Figure 57 - See the long descriptionFigure 57

    Long description for Figure 57

    The image shows the highlighted “x” icon located in the blue bar at the top of the limitation, which can be used to delete a limitation.

  9. To create another limitation list, the user can click on the “Add another limitation” button. The user must then repeat the steps above for each additional limitation.

    Figure 58 - See the long descriptionFigure 58

    Long description for Figure 58

    The image shows the highlighted “Add another limitation” button.

  10. Once the user is satisfied with the limitation information provided, the user must click on “Claimed priorities” to proceed to the next screen.

1.9 Claimed Priorities

  1. To add a claim to priority, the user must click on the “Add claimed priority” button.

    Figure 59 - See the long descriptionFigure 59

    Long description for Figure 59

    The image shows the highlighted “Add a claimed priority” button.

  2. The default filing office for the priority claim will be Canada (the basic application information). If priority concerns another country, the user must click on the drop-down menu and select the appropriate country.

    Figure 60 - See the long descriptionFigure 60

    Long description for Figure 60

    The image shows the highlighted “Office of earlier filing” field, and the expanded drop-down menu which displays all possible offices of earlier filing and their corresponding country code.

  3. The user must enter the number of earlier filing (application number). Once entered, the number of earlier filing will also appear as the reference number in the blue bar at the top.

    Figure 61 - See the long descriptionFigure 61

    Long description for Figure 61

    The image shows the highlighted “Number of earlier filing” field.

  4. The user must also include the date of earlier filing. Once entered, the date will appear beside the reference number in the blue bar at the top.

    Figure 62 - See the long descriptionFigure 62

    Long description for Figure 62

    The image shows the highlighted “Date of earlier filing” field.

  5. To claim this priority for the all of the goods and services in the AIR, skip step 6.

    Figure 63 - See the long descriptionFigure 63

    Long description for Figure 63

    The image shows the highlighted statement that “In case you want a priority for the full record of the goods and services as indicated in your request for international registration, you do not need to do anything.”

  6. If priority is being claimed for only some of the goods or services  the user must:
    1. Click on the drop-menu located on the left hand side. Select the Nice class for which priority is being claimed as shown in figure 64.

      Figure 64 - See the long descriptionFigure 64

      Long description for Figure 64

      The image shows the expanded drop-down menu located on the left hand side, which allows the user to select the Nice class for which priority is being claimed.

    2. Once the Nice class has been selected, the user must highlight the applicable goods or services.

      Figure 65 - See the long descriptionFigure 65

      Long description for Figure 65

      The image shows the screen after the user has selected the Nice class, and highlighted the applicable goods or services on the left hand side.

    3. Once the particular goods or services are highlighted, the user must click on the “flash” arrow located between the two text boxes. The selected goods or services appearing on the left will now appear in the text box on the right.

      Figure 66 - See the long descriptionFigure 66

      Long description for Figure 66

      The image shows the highlighted “flash” arrow located between the two text boxes.

      Figure 67 - See the long descriptionFigure 67

      Long description for Figure 67

      The image shows the highlighted goods or services after the user has clicked the “flash” arrow to move them to text box on the right.

    4. To add another priority claim, the user must click on the “Add another claimed priority” button and repeat the above steps.

      Figure 68 - See the long descriptionFigure 68

      Long description for Figure 68

      The image shows the highlighted “Add another claimed priority” button.

    Other functionalities on this screen:

    Button

    Function

    ‘Remove class’

    This will remove all the terms within the selected Nice class.

    ‘Remove selected terms’

    This will remove all the highlighted terms within the selected Nice class.

    ‘X’ icon

    This button will delete the entire priority claim.

    Figure 69 - See the long descriptionFigure 69

    Long description for Figure 69

    The image shows other highlighted functionalities on the claimed priorities screen including: the “X” icon; “Remove class” button; and the “Remove selected terms” button.

  7. Once the priority claims details are satisfactory or if none are claimed, the user can proceed by either:
    1. Clicking on “MM17” to navigate to the next screen and follow the instructions in section 1.10. (if applicable).  The“MM17” section will only appear if the European Union is a designated Contracting Party;
    2. Clicking on “MM18” to navigate to the next screen and follow the instructions in section 1.11. (if applicable).  The“MM18” section will only appear if the United States of America is a designated Contracting Party; or
    3. Clicking on “Attachment” to navigate to the next screen and follow the instructions in section 1.12.  

1.10 MM17

If the European Union (EUIPO) is a Designated Contracting Party, the applicant may include a Claim of Seniority (MM17 form)”.  CIPO does not certify the contents of the MM17 section.

  1. To add a seniority claim, click on the “Add seniority” button.

    Figure 70 - See the long descriptionFigure 70

    Long description for Figure 70

    The image shows the highlighted “Add seniority” button.

  2. The user must then enter the mandatory information.

    Figure 71 - See the long descriptionFigure 71

    Long description for Figure 71

    The image shows an overview of the “MM17” screen once the user has begun the process of adding seniority.

  3. Once the MM17 information is satisfactory, the user must click on “MM18” or “Attachments” (as applicable) at the bottom right to proceed.

1.11 MM18 (Declaration of intention to use the mark)

This section is required if the United States of America is a Designated Contracting Party in the AIR.

As this is a requirement specific to the United States of America, the content of the section is available in English only in the Madrid eFiling system.

All fields in this MM18 section are mandatory including the declaration check box; the signature can be typed in. CIPO does not certify the contents of the MM18, Madrid eFiling will ensure that the MM18 section is included as part of the AIR and will not let the user proceed if the United States of America is a designated contracting party and the MM18 section has not been completed. 

To avoid any delay in the processing of the AIR, please carefully read the content of the MM18 and sign the form as per the instructions provided. 

Figure 72 - See the long descriptionFigure 72

Long description for Figure 72

The image shows an overview of the “MM18” screen.

Once all mandatory fields in the MM18 section have been completed, the user must click on “Attachments” at the bottom right to proceed.  A PDF version of the information captured in the MM18 section will be generated and saved in the “Attachments” screen under the “Intention to use the mark” heading.

1.12 Attachments

Once the MM18 section is completed, it will appear on this page under the “Intention to use the mark” heading. To view the PDF, the user must click on the file name to open it with a PDF viewer.

Figure 73 - See the long descriptionFigure 73

Long description for Figure 73

The image shows the highlighted “MM18” Report PDF hyperlink under the “Intention to use the mark” heading.

  1. The user may upload any attachments/files relevant to the AIR using the following steps.
    1.  Click on the “Add files” button
    2. Select the appropriate file from the user's computer.

      Note: Only one file can be added at a time. To add more than one file, the user must repeat the first two steps.

    3. Once all of the attachments/files have been added, the user must click on the “Start all uploads” button. This step is very important: if the added attachment/files are not uploaded, they will not be included as attachments.

      Figure 74 - See the long descriptionFigure 74

      Long description for Figure 74

      The image shows the highlighted “Start upload” and “Start all uploads” buttons.

    4. Once the user is satisfied that all attachments have been successfully uploaded, the user can proceed by clicking on “Fee calculations”.

1.13 Fee calculations

All fees are calculated in Swiss Francs (CHF) and are payable directly to WIPO using this Madrid eFiling system. For any questions regarding fees, please consult WIPO's Schedule of Fees and their Fee Calculator.

The national fees will appear as CHF 0.00 as CIPO does not currently require a fee for the certification of AIRs, while international fees (basic part) are required by WIPO as shown in figure 75.

Figure 75 - See the long descriptionFigure 75

Long description for Figure 75

The image shows the highlighted fee calculations for the user’s application for international registration, including the “national fees” and “international fees (basic part)”.

  1. To see a more comprehensive breakdown of the fee calculations, the user can click on “Show fees details”.

    Figure 76 - See the long descriptionFigure 76

    Long description for Figure 76

    The image shows the highlighted “Show fee details” button.

    Figure 77 - See the long descriptionFigure 77

    Long description for Figure 77

    The image shows an overview of the additional fee details.

  2. To print these fee calculations, the user must click “Print fees” (figure 78).

    Figure 78 - See the long descriptionFigure 78

    Long description for Figure 78

    The image shows the highlighted “Print fees” button.

  3. Once the fee review is complete, the user must click on the ‘Validation’ button to proceed.

1.14 Validation

The following notice appears at the top of the validation section:

“A summary of your requests is provided below. Please take the time to review the details of your request and modify it as needed before proceeding to payment. Upon payment, your international application will be automatically submitted to the office of origin. Should an irregularity be found in your application, you will receive notifications and requests for clarifications”.

Figure 79 - See the long descriptionFigure 79

Long description for Figure 79

The image shows the following highlighted notice: “Please review your request before submitting your payment. A summary of your request is provided below. Please take the time to review the details of your request and modify it as needed before proceeding to payment. Upon payment, your international application will be automatically submitted to the office of origin. Should an irregularity be found in your application, you will receive notifications and requests for clarifications.”

  1. To view the summary of the AIR, the user can click on either the PDF or HTML file (referred to as “Your request”). 
  2. To make modifications to the AIR, the left hand menu may be used to toggle between the various sections. The user can click on the section to review or modify.
  3. Figure 80 - See the long descriptionFigure 80

    Long description for Figure 80

    The image shows the highlighted left hand menu, including the following sections: “Basic application / registration”; “Designated contracting parties”; “Applicant(s); “Representative”; “Languages and correspondence”; “Mark”; “Goods and services”; “Limitations”; “Claimed priorities”; “MM17”; “MM18”; “Attachments”; and “Fee calculations”.

  4. Once the user is satisfied with the contents of the AIR, the user must click on “Payment” to proceed.

1.15 payment

To finalize payment for the AIR, the user must follow the steps listed below:

  1. Clicking the “Payment” button will transfer the user to WIPO's payment platform and an invoice will be produced.

    Figure 81 - See the long descriptionFigure 81

    Long description for Figure 81

    The image shows an overview of WIPO’s payment platform.

  2. The invoice includes a payment number, reference number, the total amount to be paid, the payment subject (“Fee for Madrid eFiling” in this case), and a drop-down menu allowing the user to choose the payment method.
  3. Payment may be made by credit card or using a WIPO current account. From the drop-down menu the user must select the preferred method of payment.

    Figure 82 - See the long descriptionFigure 82

    Long description for Figure 82

    The image shows the highlighted “Choose payment method” field, and the expanded drop-down menu which includes the options to either pay by credit card or Current Account at WIPO.

  4. Once the preferred method of payment is selected, the user must click on the “Pay” button to proceed.

    Figure 83 - See the long descriptionFigure 83

    Long description for Figure 83

    The image shows the highlighted “Pay” button.

If paying by credit card, the user must:

  1. provide standard credit card information
  2. click on the “Pay” button to proceed.

When selecting to pay with a WIPO account, additional fields will appear. The user must:

  1. Enter the username and password.

    Figure 84 - See the long descriptionFigure 84

    Long description for Figure 84

    The image shows the highlighted “Username” or “Password” fields, if the user has chosen to pay by their Current Account at WIPO.

  2.  Click the “Pay” button to proceed.
  3. Clicking on the “Pay” button will send the AIR to the Office of Origin (CIPO) for certification.

1.16 Summary

The AIR is now complete and has been submitted to the Office of Origin (CIPO). The summary page will include information such as application and payment details.

Figure 85 - See the long descriptionFigure 85

Long description for Figure 85

The image shows an overview of the “Summary” screen. In addition, the image shows the highlighted “Application details” and “Payment details”.

A payment confirmation will be sent to the applicant or representative email address that was provided in the AIR.

Figure 86 - See the long descriptionFigure 86

Long description for Figure 86

The image shows the payment confirmation that is sent to the user or representative email address that was provided in the application for international registration.

1.17 Next steps

Once submitted to CIPO as the Office of Origin, the AIR will appear on the user's “My requests” screen and its status will be “Submitted to Office”. At this point, changes to the content of the AIR are no longer permitted.

However, the user will be able to view a summary of the AIR as it was submitted to the Office of Origin (CIPO) for certification.

To view the HTML version of the AIR, the user must click on the AIR application number on the “My requests” screen which will open the HTML version in another navigation tab.

Figure 87 - See the long descriptionFigure 87

Long description for Figure 87

The image shows an overview of the “My requests” list, and the user clicking on a highlighted application for international registration number to open an HTML version.

The following document will open in a new navigation tab.

Figure 88 - See the long descriptionFigure 88

Long description for Figure 88

The image shows an overview of the HTML version of an application for international registration.

To view a PDF version of the AIR, the user must:

  1. While in the “My requests” screen, the user must click on the cog wheel icon.

    Figure 89 - See the long descriptionFigure 89

    Long description for Figure 89

    The image shows the highlighted “cog wheel” icon located to the right hand side of the screen on the “My requests” list.

  2. A window will display the language of the AIR, the reference, the mark text (if the trademark is a design this field will appear blank), and a “Display request” hyperlink.

    Figure 90 - See the long descriptionFigure 90

    Long description for Figure 90

    The image shows the window that appears after clicking on the “cog wheel” icon. In addition, the image shows highlighted information that appears in the window such as: “Language”; “My reference”; Mark text”; and the “Display request” button.

  3. The user must click on “Display request” to open the PDF version of the AIR summary.

    Figure 91 - See the long descriptionFigure 91

    Long description for Figure 91

    The image shows an overview of the PDF version that appears after the user clicks on the “Display request” button.

The AIR status will change to “Office examination” as soon as an examiner is assigned to review it for certification.

2. Responding to pre-certification irregularities

2. Responding to pre-certification irregularities

2.1 Email notification

The user will be notified of a pre-certification irregularity by email notification sent to the email address provided in the AIR. The notification will include the date by which a response must be submitted to CIPO. CIPO will make every effort to certify the AIR within 2 months of its filing date. However, if the user's response is not filed in a timely manner, CIPO cannot guarantee that this timeframe will be met. The email will also specify the sections of the AIR for which an irregularity has been issued, as shown in figure 88.

Figure 92 - See the long descriptionFigure 92

Long description for Figure 92

The image shows an overview of the email notification that is sent to the email address provided in the application for international registration if a pre-certification irregularity has been issued.

2.2 MY Requests (homepage)

Upon logging into the Madrid eFiling system, the user will notice that the status of the AIR will have changed to “Correction Pending”.

This indicates that the CIPO examiner has issued a pre-certification irregularity that must be remedied by the user. A pre-certification irregularity is something that is preventing the AIR from being certified. An example could be that the user is not entitled to file the AIR using CIPO as the Office of Origin.

It is imperative that the user responds to pre-certification irregularities issued by the examiner. CIPO will consider the AIR closed if the user fails to respond to any pre-certified irregularity.

Figure 93 - See the long descriptionFigure 93

Long description for Figure 93

The image shows the highlighted “Correction pending” status that appears on the “My requests” list if a pre-certification irregularity has been issued for an application for international registration.

To respond the irregularity:

  1. The user may either click on the basic application or registration number or click on the cog wheel icon which is located on the right hand side of the status column as shown in figure 90.
  2. Figure 94 - See the long descriptionFigure 94

    Long description for Figure 94

    The image shows that a user may respond to a pre-certification irregularity by either clicking on the highlighted basic application or registration number or the “cog wheel” icon.

If the user selected to click the basic application or registration number:

  1. A screen will display the AIR.

    Figure 95 - See the long descriptionFigure 95

    Long description for Figure 95

    The image shows that a user will be brought to the first section of their application for international registration if they selected to click the basic application or registration number.

  2. Sections where an irregularity has been issued will be marked with a speech bubble icon Speech bubble icon in the applicable section(s) of the left hand menu.

    Please note: the user will only be able to make changes to the content of the AIR in the sections where a pre-certification irregularity has been raised by the examiner. The user will be able to view the content in the other sections but will not be able to modify the content.

    Figure 96 - See the long descriptionFigure 96

    Long description for Figure 96

    The image shows that sections where a pre-certification irregularity has occurred will be marked with a speech bubble icon in the application section(s) of the left hand menu.

  3. Click on the applicable section to view the irregularity. 
  4. The user may respond to irregularities in the specific section in which the irregularity has been issued.
  5. An irregularity issued in the goods and services section would look like the screen shown in figure 93. If the examiner has asked a question or raised a concern, the user will be required to provide a response in the text box provided and make the necessary change to the information on this screen.

    Figure 97 - See the long descriptionFigure 97

    Long description for Figure 97

    The image shows the highlighted text box where the user can answer if the examiner has asked a question or raised a concern.

  6. Once a user has made the necessary changes or is satisfied with their response, they can proceed to the next section with an irregularity and repeat the steps above, if applicable.
  7. While responding to irregularities the user may move from screen to screen, by either utilizing the navigation arrows at the bottom of the screen or the left hand menu as in figure 94.

    Figure 98 - See the long descriptionFigure 98

    Long description for Figure 98

    The image shows the highlighted navigation arrows at the bottom of the screen and the left hand menu that a user may use to move from screen to screen.

  8. After reviewing the AIR, if the user is satisfied with the responses provided to the examiner's pre-certification irregularities, clicking on the “Validation” section will trigger a system check, and, if no error messages show up on the validation section, clicking on the “Send” button will return the AIR and responses to the irregularities back to CIPO for review.

    Figure 99 - See the long descriptionFigure 99

    Long description for Figure 99

    The image shows an overview of the “Validation” screen. In addition, the image shows the highlighted “Send” button.

  9. At this time, the status of the AIR in the “my requests” will revert back to “Office Examination”.
  10. If the examiner is satisfied with the response provided by the applicant, the AIR will be certified and forwarded to WIPO for further processing. The applicant or representative will receive an email informing of the certification by CIPO, and the AIR status is the Madrid eFiling service will be changed to “WIPO processing”.

    Figure 100 - See the long descriptionFigure 100

    Long description for Figure 100

    The image shows the highlighted “WIPO Processing” status that appears on the “My requests” list when an examiner is satisfied with the response provided by the user and has forwarded the application for international registration to WIPO for further processing.

  11. Once submitted to WIPO for processing, all updates and information regarding the status of the AIR will be handled by WIPO.

If the user selected to click the cog wheel icon:

  1. A drop-down menu will appear. The user must click on the “Display irregularities” button to be brought to the “Validation” section which displays all irregularities issued for the AIR.

    Figure 101 - See the long descriptionFigure 101

    Long description for Figure 101

    The image shows the highlighted “Display irregularities” button.

  2. The validation section displays all pre-certification irregularities that have been issued for an AIR.

    Figure 102 - See the long descriptionFigure 102

    Long description for Figure 102

    The image shows an overview of the validation section, which displays all pre-certification irregularities that have been issued for an application for international registration.

  3. As previously mentioned, sections where an irregularity has been issued will be marked with a speech bubble icon Speech bubble icon in the applicable section(s) of the left hand menu. The user can follow the same steps as described above to respond to the pre-certification irregularities (see figure 91 and following).
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