IP roadmap – Your path to trademark registration through the Madrid System: Filing with the World Intellectual Property Organization

From: Canadian Intellectual Property Office

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ISED Citizen Services Centre
Innovation, Science and Economic Development Canada
C.D. Howe Building
235 Queen Street
Ottawa, ON  K1A 0H5
Canada

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Email: ISED@Canada.ca

1 – Filing (applicant)

The designation fees for Canada are paid to the International Bureau of the World Intellectual Property Organization (WIPO) in Swiss francs when the international application is filed (use WIPO's online fee calculator).

When your application for international registration includes a request to extend protection of the trademark to Canada, the International Bureau will forward your request to the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO). This request is referred to as a protocol application.

2 – Filing date issued

The filing date of a protocol application is assigned automatically and is the date of the international registration or the date of subsequent designation, as applicable.

3 – Examination: checking for registrability (CIPO)

A trademark examiner will review your application to make sure that your trademark is registrable.

When will I receive the total provisional refusal (examiner's report)?

Within 15 to 18 months from the filing date

4 – Examiner's report (CIPO)

A total provisional refusal will be issued if the trademark is not considered 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 report and will be sent to the International Bureau, with a copy sent to the applicant or their Canadian trademark agent, if one has been appointed.

5 – Response (applicant)

You will have the opportunity to respond to any of the examiner's concerns.

How much time do I have to respond?

6 months after the total provisional refusal (examiner's report)

6a – Approval (CIPO)

If your application is approved, CIPO will send you a formal notice of approval.

or

6b – Refusal (CIPO)

If your application is refused, CIPO will send you a report explaining why. You have the right to appeal to the Federal Court of Canada.

7 – Advertisement (CIPO)

If CIPO approves your application, it will be published in the Trade-marks Journal on CIPO's website.

This will give others the opportunity to oppose your application.

How long will my application be advertised?

2 months

Opposition

If someone opposes your application, the Trademarks Opposition Board will let you know and you will receive a copy of the statement of opposition.

You and the party opposing your application will then have a chance to file evidence and written arguments.

If the opposition is successful, your application could be completely or partially refused. You have the right to appeal to the Federal Court of Canada.

8 – Registration (CIPO)

If a protocol application has met all of the requirements for protection under Canadian legislation and if no opposition has been filed or a decision has been made in favour of the applicant, CIPO will issue a certificate of registration and send a statement of grant of protection to the International Bureau.

When will I receive my certificate?

20 days

9 – Renewal (applicant)

Renewal fees are paid in Swiss francs directly with the International Bureau (use WIPO's online fee calculator).

The Registrar will record the renewal of any international registration designation Canada receives from the International Bureau.


Permission to reproduce

Except as otherwise specifically noted, the information in this publication may be reproduced, in part or in whole and by any means, without charge or further permission from the Department of Industry, provided that due diligence is exercised in ensuring the accuracy of the information reproduced; that the Department of Industry is identified as the source institution; and that the reproduction is not represented as an official version of the information reproduced, or as having been made in affiliation with, or with the endorsement of, the Department of Industry.

For permission to reproduce the information in this publication for commercial purposes, please fill out the Application for Crown Copyright Clearance or contact the ISED Citizen Services Centre mentioned above.

Ⓒ Her Majesty the Queen in Right of Canada, as represented by the Minister of Industry, 2020

Aussi offert en français sous le titre Feuille de route de la PI – La marche à suivre pour enregistrer votre marque de commerce à l'aide du système de Madrid : Faire un dépôt auprès de l'Organisation Mondiale de la Propriété Intellectuelle.

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