The Madrid Protocol in Canada: A Summary of the General Principles

From: Canadian Intellectual Property Office

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Overview of the presentation

Introduction

Amendments to the Trademarks Act and Regulations

Preparation in view of the Accession to the Madrid Protocol

Amendments to the Trade-marks Act received royal assent on . The amendments to the Trade-marks Act and the amendments to the Trade-marks Regulations are required to enable Canada to accede to three international treaties: 

While the majority of the proposed amendments for the rules of general application are required in order to comply with the requirements under the treaties, other amendments were made to better reflect modern communication practices and reduce operational and administrative burden.

The Madrid Protocol

The Madrid Protocol provides trademark owners the possibility of filing a single application for international registration with WIPO and subsequently designate other members where protection is sought.

The resulting "international registration" serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not a trademark may be protected in its jurisdiction. Each country which is a party to the Madrid Protocol is known as a "contracting party ".

The "Office of Origin " is the trademark office of the contracting party that can receive and certify an application for the international registration of a trademark. In Canada, this office will be CIPO. The "Designated Contracting Party " is one of the contracting parties that an applicant can choose to designate in the application.

All communication between CIPO and the International Bureau of WIPO will be electronic. It will therefore be possible to file an application for international registration directly on CIPO's website. In turn,  CIPO will receive all applications coming from the International Bureau electronically.

Declarations made by Canada

Four (4) Accession Declarations

Each new member to the Madrid Protocol can chose to make certain declarations concerning the operation of the International Registration System.

Canada has chosen to make four (4) declarations as part of its accession to the Madrid Protocol.

Article 5(2)(b) of the Madrid Protocol which extends the provisional refusal period from twelve (12) to eighteen (18) months. This means that the provisional refusal (what is generally/domestically/nationally referred to as the examiner's report, must be sent before the end of the eighteen (18) months after CIPO is notified of the designation.

As per WIPO, 58 of the 103 members have made this declaration including the United States of America, Mexico, Australia, UK and New Zealand.

Article 5(2)(c) of the Madrid Protocol allows Canada to send a notification to the International Bureau informing them that a provisional refusal based on an opposition may be issued on a Protocol application after the eighteen (18) month time limit. What this means is that there is a possibility that if the opposition period has not yet occurred and more than eighteen (18) months have passed since the date of notification of designation, Canada will be able to send a notification of provisional refusal based on an opposition if a statement of opposition is filed on that Protocol application.

As per WIPO, 38 of the 103 members have made this declaration including the United States of America, Australia, UK and New Zealand.

Article 8(7)(a) of the Madrid Protocol provides for the ability to charge individual fees. These fees will be the equivalent of the national fees, only in Swiss Francs (CHF).

As per WIPO, 61 of the 103 members have made this declaration including the United States of America, Mexico, Australia, UK and New Zealand.

Rule 20bis(6)(b) of the Common Regulations declares that the recording of licenses is provided for by domestic law but the recording of these licenses in the International Register alone has no effect.

As per WIPO, 20 of the 103 members have made this declaration. (but not United States of America, Mexico, Australia, UK and New Zealand)

Summary of the International Procedure

The International Procedure

The International Procedure
Figure 1 - Text version

Stage 1 – Application through your National or Regional IP Office (Office of origin)

Before you can file an international application, you need to have already registered, or have filed an application, in your "home" IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

Stage 2 – Formal examination by WIPO

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

It is important to note that the scope of protection of an international registration is not known at this stage in the process. It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection, as outlined in Stage 3.

Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Overall, the international procedure under the Madrid Protocol comprises three stages.

Before filing an application for international registration with its national intellectual property office, the applicant will need to have already registered, or have filed an application, in the "home " intellectual property office (known as the Office of origin). In Canada, these will be known as the basic application or basic registration (also referred to as basic mark). The applicant must then submit the application for international registration through this same IP Office, which will certify and forward it to WIPO.

During stage 2, WIPO conducts a formal examination of the application for international registration and assesses conformity to rules 12 and 13 of the Common Regulations. Once the application is approved the International Bureau will notify the IP Offices in all the territories where protection of the trademark is sought.

Next, for stage 3, the IP Offices of the territories where protection of the trademark is sought will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify the applicant. If an IP Office refuses to protect the trademark, either totally or partially, this decision will not affect the decisions of other IP Offices. The applicant can contest a refusal decision directly before the IP Office concerned in accordance with its legislation. If an IP Office accepts to protect the trademark, it will issue a statement of grant of protection.

The Canadian Procedure

Some new definitions have been introduced in the Regulations to facilitate the understanding of the Madrid Protocol.

Of note, the terms "Basic application" or "Basic registration" are essentially the same and refer to either an application or registration that has been filed in Canada through CIPO that constitutes the basis for international registration.

"Protocol application" or "Protocol registration" refer to a request or registration made through the International Bureau of WIPO to extend the protection of an international registration to Canada.

The Canadian Procedure
Figure 2 - Text version

The image shows that the term "Basic application" refers to an application that has been filed in Canada through CIPO and constitutes the basis for international registration.

It also illustrates the term "Protocol application" which refers to a request made through the International Bureau of WIPO to extend the protection of an international registration to Canada.

Application for International Registration

The Office of the Registrar as Office of Origin

The Registrar has certain responsibilities as an Office of Origin under the Madrid Protocol. The Trademarks Regulations will list the content required to complete the International Bureau's model form (MM2) via the Madrid e-Filing service which will be accessible on CIPO's website in English or in French. These requirements will be clearly laid out in the online filing system and the fee will be automatically calculated, payable in Swiss Francs, and will include the WIPO filing fee for the application for international registration and the fee for each contracting party that has been designated. Note that CIPO will not require any fee for the certification of the application for international registration.

The Registrar will review the particulars appearing in the application for international registration and certify that they correspond to those appearing in the basic application or registration. If clarification or more information is required, the Registrar will contact the applicant. If not, the application is certified and forwarded to the International Bureau.

Also different from the national registration system, transfer of ownership requests must be presented directly to the International Bureau. In cases where the new owner is unable to obtain the signature of the previous owner of the international registration, the request accompanied by evidence of the transfer, may be filed with the Registrar for presentation to the International Bureau.

The Registrar will also notify the International Bureau of any change or proceeding affecting the scope of protection in the basic application or registration within five years of the date of the international registration (Ceasing of effect). For example, if the applicant makes changes to the statement of goods or services, our practice will be to notify the International Bureau when the basic application matures to registration or at the expiration of the five year period, whichever is the case.

The International Procedure

Stage 2 – WIPO examines the Application for International Registration.

The International Procedure
Figure 3 - Text version

Stage 1 – Application through your National or Regional IP Office (Office of origin)

Before you can file an international application, you need to have already registered, or have filed an application, in your "home" IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

Stage 2 – Formal examination by WIPO

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

It is important to note that the scope of protection of an international registration is not known at this stage in the process. It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection, as outlined in Stage 3.

Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Irregularities

Upon examination of the application for international registration, the International Bureau may issue a notification of irregularity if there are deficiencies in the application for international registration or if clarification is required. Applicants may receive what is called an "irregularity letter ". This notification is not always fatal to the registration of a trademark and can range from insufficient payment to incorrect classification of goods.

Certain irregularities will be remedied by CIPO. For example, the applicant is not entitled to file an application for international registration as he is not a national of Canada and has not provided a Canadian address. 

Other irregularities will need to be remedied by the applicant either directly with the International Bureau, for example, in the case of missing fees, or through CIPO, for example, in the case of an incorrect classification of goods or services.

In all cases, the notification will clearly indicate who must provide a response.

Irregularities must be remedied with WIPO within 3 months. Where the irregularity is not remedied, the application for international registration could be declared abandoned in some cases. Generally this information will be included in the irregularity letter sent by the International Bureau.

The International Procedure

Stage 3 – Moving on to stage 3 of the international procedure which describes what happens when Canada is a designated contracting party.

The International Procedure
Figure 4 - Text version

Stage 1 – Application through your National or Regional IP Office (Office of origin)

Before you can file an international application, you need to have already registered, or have filed an application, in your "home" IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

Stage 2 – Formal examination by WIPO

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

It is important to note that the scope of protection of an international registration is not known at this stage in the process. It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection, as outlined in Stage 3.

Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Territorial Extension to Canada

Protocol Applications

We will now follow the request for territorial extension to Canada that originated in another office of origin. This is called a Protocol application.

There are two types of designation namely the original 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.

Examination of the Protocol Application

When an international registration includes a request to extend protection of the trademark to Canada, the International Bureau will forward the request to the Registrar. The request is called a designation and may be part of the initial international application or may be made at a later time via a subsequent designation.

Once the Registrar has received the designation notification from the International Bureau, the request becomes a Protocol application as defined in the Trademarks Regulations. The filing date of a Protocol application is the date of the international registration or the date of subsequent designation, as applicable.

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.

If the language of the designation notification is identified as Spanish, an offer for future communication in English or French will be included in the acknowledgement/filing notice in accordance with Canada's Official Languages Act. By default, the Registrar will communicate in English with the applicant.

If a WIPO representative was included in the designation notification but does not appear on the Canadian list of Trademark agents (or does not have a Canadian address), the Registrar will, when CIPO receives the designation, issue a courtesy letter informing that further correspondence regarding the Protocol application will be directly with the applicant or the appointed Canadian agent.

If the designation is for a collective, certification or guarantee mark, which are different terms used in other jurisdictions to reference the same or similar type of mark, it will be considered and examined as a certification mark in Canada.

Total Provisional Refusal

As is the case with national applications, the Registrar will not be able to refuse a Protocol application without having given the applicant the opportunity to respond to the examiner's objections. The Registrar will send a notice of total provisional refusal to the International Bureau. This total provisional refusal is essentially the equivalent of the examiner's first report.

In Canada, the provisional refusal must be sent within eighteen (18) months from the time it received the designation or within any extended period as required for a potential opposition.

The Registrar must state all the grounds on which the refusal is based, including any unmet requirements, in the total provisional refusal.

The applicant has the opportunity to respond to the total provisional refusal directly with the Registrar (CIPO examiner). A correspondence exchange between the applicant and the examiner may take place, the result of which may be the advertisement of the Protocol application for opposition purposes or the refusal of the Protocol application.

Divisional applications and Mergers

In October 2016, amendments to the Common Regulations of the Madrid Protocol were approved to allow for the division and merger of international registrations. The implementation of these new provisions was . Therefore, once the Protocol is in force in Canada, it will be possible to divide and merge international registrations via CIPO. To do so, the applicant will need to send a request to the Registrar. Any divided goods or services filed or advertised in the original Protocol application will need to be specifically listed using the IB's official form.

The owner of the divided international registration may request to subsequently merge them if they stem from the same original Protocol application, relate to the same trademark and have the same owner. In both cases, the Registrar will send the request to the International Bureau and, once accepted, will proceed with either the division of the Protocol application or the merger of the Protocol registrations.

Registration

When the trademark that is subject of a Protocol application becomes registered, the Registrar will issue a certificate of registration and send it to the trademark owner/holder.  The Registrar will also send a statement of grant of protection to the International Bureau electronically.

A Protocol registration is valid for ten years from the date of international registration and not from the date of registration of the trademark in Canada.

Term of protection of an International Registration
Figure 5 - Text version

The image shows the term of protection of an International Registration. A Protocol registration is valid for ten years from the date of international registration and not ten years from the date of registration of the trademark in Canada. The image is an example whereby the renewal takes place eight years after the date of registration in Canada. The following renewals, should the registration continue to be renewed, will be every ten years after that.

Renewal of the International Registration

Renewal of the international registration will be recorded in the Canadian trademarks database once CIPO receives the renewal confirmation notification from the International Bureau. The protection period following a renewal is of ten (10) years. The Registrar will send a renewal certificate to the registered owner of the Protocol registration or the appointed agent as the case may be.

It is important to note that, occasionally, the renewal of the international registration may happen prior to the Protocol application being registered in Canada. If such is the case, the Registrar will issue a notification of renewal of the international registration to the applicant or the appointed agent and the protection period after renewal will be calculated using this new date.

Calculation of the term of protection
Figure 6 - Text version

The image shows how the calculation of the term of protection for an international registration when the Protocol application is still undergoing examination in Canada. The image shows the ten year protection period as calculated from when the international registration is renewed at the International Bureau.

Amendments

A limitation consists of removing goods or services in the international registration. If the applicant would like to revise the goods or services, this will result in a new list of goods or services. The Registrar will determine if the new list is within the scope of the Protocol application or the Protocol registration and if it is acceptable.

For Protocol applications, if some of the goods or services are deleted, the application will be amended accordingly. If all the goods or services are deleted, the Protocol application is considered withdrawn. If the new list is not acceptable, the Registrar will communicate with the applicant.

In the case of a Protocol registration, if some of the goods or services are deleted, the Canadian register will be amended accordingly. If all the goods or services are deleted, the Protocol registration will be considered cancelled. If the new list is not considered acceptable, the Registrar will notify the International Bureau within eighteen (18) months that the limitation has no effect in Canada and the change to the list of goods or services will not be recorded.

Sometimes the International Bureau will notify Canada of a renunciation. A renunciation affects all of the goods or services but only for some of the designated Contracting Parties. It is the equivalent to a voluntary abandonment or cancellation.

When the Registrar is notified by the International Bureau of a renunciation, the Protocol application is deemed withdrawn or the Protocol registration is cancelled.

On the other hand, a cancellation of goods or services listed in the international registration can be partial or total but affects all of the designated Contracting Parties.

If the Registrar is notified of a cancellation and it affects a Protocol applications, if some of the goods or services are removed, the application will be amended accordingly. If all of the goods or services are removed, the Protocol application is considered withdrawn.

In the case of a Protocol registration, if some of the goods or services are removed, the Canadian register will be amended accordingly. If all of the goods or services are removed, the Protocol registration will be considered cancelled.

When the International Bureau sends a notification of change in ownership of the international registration to the Registrar, the new owner information will be recorded in the Trademarks Database/Register.

Effect on a Protocol Application: If anything outstanding in examination or opposition, same deadlines apply

Effect on a Protocol Registration: If anything outstanding post registration (i.e. S45), same deadlines apply

Note: The previous Canadian Trademark Agent that was appointed to represent the previous applicant/owner will be removed. A courtesy letter will be sent to WIPO Representative if one was appointed in the Notification of change of ownership. The applicant will have the opportunity to appoint a Canadian Trademark Agent if the WIPO Representative is not on the list of agents.

When the IB notifies CIPO of a change in the owner's name or address for a particular International Registration, CIPO will record the new owner's name/address in the Trademarks Database/Register

The effect on a Protocol Application and Registration is that the owner's name/address is updated. The Trademarks Branch will not re-issue any office action. It is the responsibility of the applicant/registered owner to ensure a proper response is filed in time to any outstanding office actions.

Recording of license agreements

Rule 20bis(6)(b) (recording of licenses provided for in the domestic law, but the recording of licenses in the International Register has no effect)

CIPO will record license agreements in the trademarks register at the request of the registered owner.

Corrections on Protocol Applications

Notification of Correction

On occasion, the International Bureau will need to make corrections to the International Register. When notified of a correction, the Registrar will modify the Protocol applications and registrations accordingly.

If the correction is not substantive, the Registrar will make the correction to the Protocol application.

If the correction is substantive and the Protocol application is not advertised, the Registrar will issue a Total Provisional Refusal informing the IB (and applicant) of the grounds. The applicant will have the opportunity to respond within the same six (6) month deadline as usual in examination. It will essentially be the same process as any Total Provisional Refusal in examination but this Total Provisional Refusal following a correction notification may be issued after the original eighteen (18) month deadline; however it must be issued within eighteen (18) months from the date if the notification of correction.

If the Protocol application has already been advertised and the correction is substantive and affects all of the goods or services, the registrar will issue a Total Provisional Refusal informing the IB (and applicant) of the grounds.

If the Protocol application has already been advertised and the correction is substantive but affects only some of the goods or services, the applicant will be invited, by correspondence from the Registrar, to either delete the goods or services affected by the correction and continue in the process or to choose that the Protocol application is deemed to never have been advertised and be examined as corrected (with the potential issuance of a Total Provisional Refusal informing the IB (and applicant) of the grounds within eighteen (18) months from the date of notification of correction).

The applicant will have two (2) months to inform the Registrar of the decision.

If no response is received, the goods or services will be deleted from the Protocol application and the process will continue.

Notification of Correction

If the Registrar considers that protection can continue to be granted to the international registration as corrected, the Registrar will make the correction to the Protocol registration (amend the register).

If the Registrar considers that protection can no longer be granted to the international registration as corrected, the Registrar will issue a Total or Partial Provisional Refusal (depending on whether the correction affects all or some of the goods or services) informing the IB (and registered owner) of the grounds.

Following the owner's response, if the Registrar determines that protection can continue to be granted to the international registration as corrected, the Registrar will make the correction to the Protocol registration (amend the register). If the Registrar determines that protection can no longer be granted to the international registration as corrected, the Registrar either amends the Protocol registration (amends the register) and notifies the IB of the resulting list of goods or services in the Protocol registration or cancels the Protocol registration and notifies the IB of the Confirmation of Total Provisional Refusal for the Protocol registration.

Correction Request

Any request by the Registrar to correct an error affecting the rights of an international registration on the International Register must be received by the International Bureau within nine months from the date of publication of the erroneous entry in the International Register.

This time limit does not apply to errors made by the International Bureau while recording/uploading the data in the International Register as it is considered that the International Bureau was always in possession of the correct information.

The nine (9) month time limit also does not apply to non-substantive errors like a correction to the name or address of the owner or obvious mistakes (typographical errors) in the list of goods and services.

Irregularities

For the irregularities that require a response, the Registrar will be required to send it to the International Bureau within two (2) months of the notification.

Transformation

Other provisions in the proposed Regulations refer to transformation. The transformation process is essentially converting a Protocol application or registration into a national application or registration. The International Bureau may cancel an international registration in whole or in part at the request of the Office of Origin. The cancelled goods or services can be included in a transformation application. The resulting domestic application or registration benefits from all of the steps that were taken in relation to the Protocol application or Protocol registration. The owner must file the request for transformation directly with the Registrar, by electronic means, within three months after the cancellation is recorded on the International Register.

Replacement

Under the Madrid System (Article 4bis of the Madrid Protocol), a trademark that is the subject of a national registration in the Office of a Contracting Party is, under certain conditions, deemed to be replaced by an international registration of the same mark. This is known as a "replacement" and Trademark owners may request that the Registrar take note of this replacement in the Canadian Trademarks Database/Register.

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.

Managing an International Registration

Other than the 5 year dependency period mentioned previously, the international registration is independent from the basic application or registration with respect to ownership changes, renewal, etc.

WIPO offers a variety of Madrid forms (MM forms) on their website which must be used for all amendments or any change to be made to the international registration including subsequent designations. Generally, all these forms must be submitted directly to WIPO and not to the Trademarks Branch (except the previously mentioned Change in Ownership (MM5 form) where the Registrar may certify an ownership change request).

Requests for renewal and subsequent designation must be sent using the WIPO online services. CIPO will not be able to process those requests. Payment of fees for these services must be made directly with WIPO which offers a deposit account service. For more information regarding this, please consult the WIPO website.

The Madrid System requires the payment of fees for all services requested which are payable directly to WIPO and must be paid in Swiss Francs (CHF) currency. More information regarding fees is available on the WIPO website.

It is important to note that all amendments made to an International registration has a potential effect on the application or registration in each of the designated contracting parties in that international registration. For example, if you amend the international registration's owner name or address, all of the designated contracting parties will be notified of this change.

Next Steps

Next Steps for the Trademarks Branch

The Trademarks Branch is now focusing on finalizing the IT systems including Madrid eFiling and its administrative system (Intrepid).

Applicants for Protocol applications will be able to use the amendment to application e-service however other e-services will not be available, for example, the renewal e-service since Renewal must take place at the International Registration level directly with the International Bureau of WIPO.

We continue to draft our training material as well as many communication pieces like tweets and emails.

We continue to draft our Practice Notices to clarify the Trademarks Office's procedures for the processing of applications under the Madrid System.

Guides will be available on our Website that will serve as reference material for the processing of applications under the Madrid System. Our Website will also be updated to clearly identify and make accessible all resources available in the Madrid system context.

Thank you!

For more information, visit www.cipo.gc.ca/tm and/or www.wipo.int

Follow CIPO on Twitter @CIPO_Canada

Communicate with CIPO on LinkedIn @CanadianIntellectualPropertyOffice

Questions or Comments? Send us an email: madrid@canada.ca

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