The following is part of Bereskin & Parr’s “Trademark Transition” series, and follows up on a webinar broadcast by Bereskin & Parr LLP on March 21, 2018.​ To listen to an archived version of the webinar click here.

With the changes to the Canadian Trade-marks Act currently estimated to come into force in Spring 2019, Canadian trademark owners will soon be able to take advantage of the international trademark system under the Madrid Protocol. This system provides a cost-effective and administratively efficient method for applicants to file a single application through one central organization, the World Intellectual Property Organization (WIPO), designating up to 116 countries.

It also streamlines the renewal process, allowing for renewal in all the countries covered by the international registration through the filing of a single renewal request. Further, any changes in ownership, name, address, etc. can be recorded across all of the designated countries through the filing of a single request.

The international trademark system is likely to be most beneficial to medium and large Canadian businesses with operations in multiple jurisdictions. It may prove more beneficial for secondary versus primary marks, particularly for Canadian applicants. To take advantage of the international registration system, Canadian applicants first need to have a Canadian trademark application or registration (an “originating application or registration”) on which to base their international application. The goods and/or services in the international application cannot be broader than those covered by the originating application or registration. Because the Canadian Trademarks Office is particularly stringent when it comes to examination of goods and services, broader coverage may be available on a country-by-country basis. Many international trademark owners currently use a combination of national filings and Madrid Protocol filings in order to ensure they have the broadest coverage globally.

In terms of costs, the international trademark system is potentially a less expensive option than filing national applications for the same mark in many countries, at least at the outset. It is not necessary to engage foreign counsel in the designated countries for filing purposes, and there may never be a need, provided no objections are raised.

In preparation for the coming into force of the changes to the Trade-marks Act and the introduction of the international registration system in Canada, one thing Canadian applicants can do now is audit their trademark portfolios to determine:

  • which of their marks are suited to an international registration, and which are more appropriately covered by national trademark applications;
  • whether they have Canadian applications or registrations for those marks for which they intend to file international trademark applications, and
  • if so, whether the goods / services coverage is broad enough (in other words, whether existing Canadian applications and registration cover their full “wish list”);
  • if not, whether they should address any gaps with new filings, particularly since currently there is a single government filing fee of $250 CAD regardless of the number of classes of goods / services, whereas once the amendments to the Trade-marks Act are implemented, this fee will increase to $330 CAD for one class, and $100 more for each additional class.

Implementation of the changes to the Trade-marks Act will undoubtedly bring challenges for trademark owners, but with Canada’s accession to the Madrid Protocol, it will also give Canadian applicants a new cost-effective and administratively streamlined option for obtaining protection for their marks in multiple jurisdictions worldwide.