Amendments to the Canadian Trade-marks Act initially passed in 2014 will come into force on June 17, 2019. These amendments will bring changes to the manner in which domestic applications are treated by the Canadian Intellectual Property Office (CIPO) but will also implement Canada’s accession to the Madrid Protocol, the Singapore Treaty, and the Nice Agreement.

Through the implementation of the Madrid Protocol, Canadians will now have the ability to file trade-mark applications with the World Intellectual Property Organization (WIPO), which administers the Madrid System. WIPO is a United Nations (UN) agency created to “encourage creative activity” and “to promote the protection of intellectual property throughout the world”.[1]

Previously, Canadians seeking to protect their marks in foreign countries would have had to file applications in each country individually. Once the amendments to the Trade-marks Act come into effect, Canadian applicants will have the ability to obtain trade-mark protection in a number of counties by filing one application and paying one set of fees to WIPO to obtain an international registration (IR), which is often referred to as a bundle of national registrations. Currently, WIPO’s Madrid System has 103 members, covering 119 countries, representing more than 80% of world trade.[2] Having access to this system now will be a great benefit to Canadians interested in protecting their marks abroad.

After an IR is obtained, any subsequent changes to that registration can be recorded through WIPO by means of a single request. Therefore, instead of having to record an assignment or update the Applicant’s address in each country covered by the WIPO registration, the Applicant can simply record the change with WIPO and it, in turn, will advise each of the designated Madrid countries’ Trade-marks Office accordingly.

There is also a benefit associated with the fact that there is only one registration to renew. An international registration may be renewed every ten years with the payment of only one fee. If a trade-mark owner holds an international registration which covers many countries, this can reduce the administrative requirements for portfolio management.

There are essentially three stages for a Canadian applicant to obtain an IR: (1) filing a trade-mark application with CIPO or owning a registered Canadian; (2) the international application process; and (3) refusals.

The first stage for a Canadian applicant is to file a trade-mark application with CIPO (the “basic application”) for the trade-mark of interest (the “basic mark”). If the Canadian applicant already has a Canadian registration for the basic mark (the “basic registration”), then it can proceed directly to the second stage. A Canadian basic application is like any other regularly filed Canadian trade-mark application and must include a statement of goods and services in ordinary commercial terms. Although classifying goods and services in Canadian trade-mark applications according to the Nice Agreement is voluntary until June 17, 2019, it is required in a Canadian application or registration in order to be used as the basic application or basic registration to file an international application.

The second stage is to prepare and file the international application. Although the Madrid System is administered by WIPO, the international application must be filed with CIPO using WIPO’s e-filing system. Upon filing international the application, CIPO compares the basic application or registration to the international application and confirms, for example, that the international application is identical to the basic mark, that the statement of goods and services in the international application is covered by the basic application or basic registration (the statement may be narrower in scope), and that the applicant of the international application is the same as the applicant of the basic mark or the same owner as the basic registration.

In the international application, the Canadian applicant designates in which of the 119 Madrid countries it is seeking trade-mark protection. There are three fees when filing an international application – a basic fee of 653 Swiss Francs if the mark is in black and white (903 Swiss Francs if the mark is in colour), a complementary fee of 100 Swiss Francs per country designated, and a supplementary fee of 100 Swiss Francs per class of goods and services beyond the third class. For certain designated countries, a country specific “individual fee” replaces the complementary fee.

Once certified by CIPO, the international application is sent to WIPO for formal examination. WIPO checks the international application for “irregularities”, which are discrepancies, errors, or mistakes in the international application. There are three groups of irregularities, administrative irregularities, irregularities with respect to the classification of the goods and services, and irregularities with respect to the indication of goods and services. Once the irregularities are addressed, the IR is published in the WIPO Gazette of International Marks. WIPO also issues a certificate of registration and notifies the Trade-mark Offices of the designated Madrid countries of the IR. However, the scope of protection of the IR is not determined until the third and final stage is completed.

In the third stage, the international application is substantively examined by the Trade-marks Office of each designated Madrid country under its respective domestic trade-mark law. Each Trade-mark Office has 12 months (or 18 months, depending on the country) to raise a provisional refusal against the IR, either because the IR does not comply with its domestic trade-mark law or because an opposition has been filed. A review, appeal, or response to an opposition is done in the Trade-marks Office of each designated Madrid country in which a provisional refusal has been raised. Either protection for the mark is totally refused or protection is partially or totally granted. Alternatively, a Trade-marks Office may find that there are no grounds to refuse protection.

A peculiarity of the Madrid System is that it requires that the IR remain dependent on the basic application or registration for a period of five years from the registration date of the IR. If the basic registration is cancelled or not renewed in this five year period, the IR is cancelled and does not provide further protection. Likewise, if the basic application is refused or withdrawn, the IR is cancelled and does not provide further protection. In either of these cases, the applicant has three months from the date of cancellation to file a domestic application in each of the Trade-mark Offices of the designated Madrid countries where it would like continued protection. After five years from the IR date, the IR becomes independent of the basic registration or basic application.

By acceding to the Madrid Protocol, Canadians will now have access to this streamlined system of protecting their rights in foreign jurisdictions. However, because there is a base fee for filing an application through WIPO in addition to each individual territory’s filing fees, if an Applicant is only seeking to protect their trade-mark in a small number of countries, it may be more economically efficient to pursue their rights by filing in each jurisdiction individually. This would also mean that any changes to ownership or renewals would have to be recorded in each country’s Trade-marks Office separately.

Additionally, because the international registration must mirror the Canadian application or registration upon which it is based, an applicant cannot seek protection through WIPO which is broader than that which they have in Canada. This could be a disadvantage to Canadian applicants because our system requires a very high degree of specificity in statement of goods and services which is not required in other jurisdictions.

Therefore, while filing applications through WIPO can be advantageous in some respects, there are some additional factors which Canadian trade-mark owners may wish to consider prior to filing an international registration.